*1 Claims, opinion of this Federal
court, takings compensable. are not COMPANY, CHEMICAL DOW
Plaintiff-Appellant, and Exx-
EXXON CORPORATION Patents, De- Chemical Appellants. fendants/Cross
Nos. 97-1351. Appeals, States Court of
United
Federal Circuit.
March *2 January Chicago, following argument oral on decision Roper Quigg, Roper, & Harry J. 6,1998. On IL, plaintiff-appellant. argued for the N. Nimrod and Raymond brief were competi- law unfair Because Dow’s state were Also on brief A. Barlow. Aaron coterminous with a claim tion was not claim Compa- Kalil, The Dow Chemical Charles J. inequitable conduct and not otherwise White, Midland, MI, Wayne L. Free- ny, and laws, we port, TX. of that the district court’s dismissal reverse Strauss, Gump, Akin, Joseph, Daniel proceedings. for further claim remand and DC, L.L.P., Feld, Washington, ar- Hauer & court did because district not appellants. gued for defendants/cross finding there were commit clear error Gallerano, John L. Lisa On the brief were S. circumstances, exceptional we affirm the no Levin, Dallas, Hendricks, TX. Richard and C. judgment extent district court’s Woglom, Erie C. Also on the brief attorney Dow an award of fees. denied Ousterhout, Loring, Denise L. A. and Glenn addition, properly ECPI was found because Neave, City, York and William Fish New & party, affirm indispensable not to be Cottrell, III, Rich- L. J. Wade and Frederick court’s dismissal of ECPI P.A., ards, Finger Wilmington, Layton & the case. Jacobs, R. Dal- were Scott DE. Of counsel Smith, Akin, las, Gump, TX, J. and Richard BACKGROUND Feld, L.L.P., Austin, TX, Strauss, Hauer & “ (the 5,246,783 pat- ’783 Patent No. Neave, McCabe, & New J. Fish and William ent”) Spenadel, Mo- was issued Lawrence City.
York Aspy nica L. and K. Mehta Hendewerk 21, 1993, September assigned to ECPI. and MICHEL, LOURIE, and Before wholly ECPI, corporation, is a a Delaware CLEVENGER, Judges. Circuit subsidiary Corp., a New of Exxon owned Opinion by Circuit for the court filed corporation principal place with its Jersey Judge Judge Circuit LOURIE MICHEL. E CPI’s ’783 dis- Texas. business part. dissents devices manu- certain wire cable closes poly- particular insulating using a factured MICHEL, Judge. Circuit commonly used to mer. Such devices are Dow Plaintiff-Appellant, The Chemical power to residential and transmit electrical (“Dow”), appeals judg final Company from a Corp. manufac- consumers. Exxon business District Court for ment of the United States patented de- polymer used tures the Delaware, entered on March the District VISTALON and trade names vices under the state law unfair dismissing Dow’s time the ’783 At about same EXACT. Corporation against Exxon issued, corpora- a Delaware patent was (“Exxon justiciable Corp.”) no issues place of principal business tion with denying case and Dow’s remained “ITP” its first line of Michigan, introduced pursuant attorney fees to 35 U.S.C. claim for name AF- polymer products under the trade requisite exceptional cir 285 because the By February had intro- Dow FINITY. shown to exist. cumstances had been products, known line ITP duced a second Corp., Exxon No. 94-572- Dow Co. v. Chem. ENGAGE, specifically polymers two 1997). (D.Del. Corp. Exxon SLR Mar. By use. Dow had also for cable June (“ECPI”) Patents, Inc. and Exxon Chemical product de- developed a third ENGAGE “Exxon”) cross-appeal the district (together, Subsequently, use. signed for cable and wire 24,1996, September court’s order entered products further Dow ENGAGE introduced from the case due to ECPI dismissing ECPI IP polymers, the Nordel as well as line pur indispensable party being found an devices. polymers, for use wire cable 19(b). Dow Chem. Co. suant to Fed.R.Civ.P. an action Dow filed Patents, On October No. 94-572- Chem. Exxon District against Exxon in the United States Dow’s Sept. Both SLR District of Delaware. timely Court appeal cross-appeal were and Exxon’s Count I complaint two counts. consisted filed this ease was submitted our declaratory judgment was for certain district court did not deem ECPI polymers “indispensable” party pursuant made wires and cables to the action 19(b) because, This infringe practical did not ’783 count to Fed.R.Civ.P. “as matter, allegation [Corp.] also ’783 Exxon duty contained an has both the *3 capability protecting invalid and unenforceable. Count the of ECPI’s interests. Joinder, therefore, Dow, competi- required.” II was a state law claim unfair is not (D.Del. Exxon, (footnote slip 24,1996) upon alleged op. Sept. tion based threats 12at omitted). by letter, meetings made in to and sue spective and actual Dow ENGAGE custom- After further briefing, the district court patent. ers for the ’783 infringement of held in a Memorandum No- Order entered allege Count II was later to amended vember that Dow would be good Exxon had no faith belief that Dow permitted present to evidence Exxon’s infringed the when Exxon made those alleged inequitable in connection In threats. a second amendment to Count remaining with law competi- its unfair II, alleged Exxon obtained the ’783 (D.Del. slip op. tion claim.1 at 6-7 Nov. patent by inequitable conduct before the Pat- 1996). posited The district court (the “PTO”). ent and Trademark Office court, then, the “[t]he is whether alleged inequitable conduct was Exxon patent validity, specifically issues of polymers superior claimed its various conduct, alleged inequitable may Exxon’s be prior electrical tests to the art while with- decided in the context of a business tort holding knowledge group polymers, arising directly claim where all claims Industries, sold Mitsui Petrochemical Ltd. the laws have been dismissed.” Id. at TAFMER, under the trade name which re- explained 3-4. The court that its decision to putedly or could achieve the same better exclude evidence conduct re- polymers results than Exxon the and which precedent upon lied indicating that a court allegedly anticipated the the ’783 claims beyond scope should not reach of given the patent. controversy patent. to invalidate Id. at 5 August 5, 1996,
On
Exxon
(citing
filed
“State-
&
Pro-Mold
Tool Co. v. Great Lakes
Plastics,
Inc.,
Non-Liability”
ment of
with
1568, 1575,
the district
F.3d
customers,
gave
(Fed.Cir.1996);
court which
Dow and its
v.
Vieau
cost, perpetual
Inc.,
no
immunity
Japax,
from suit for
823 F.2d
infringement
(Fed.Cir.1987)).
USPQ2d 1094,
of the ’783
As a result
1100-02
filing
of this Statement of Non-Liabili-
the
court
district
to allow
“decline[d]
ty, the
district court
Count I of what in
proceed
dismissed
essence
trial
is
to
complaint
Dow’s
Sep-
guise
in an
Order entered
of a business tort trial.” Id. at 6.
addition,
tember
1996. Dow
Chem. Co. Exxon
court
further de-
Patents,
Inc.,
Chem.
No.
presumptive validity
94-572-SLR clared that the
attach-
Sept. 24,
ing
patents
This same Order
to
that “a
meant
owner
also
litigation.
dismissed ECPI
from
who exercises the
to exclude others
1. The district court
to
person
declined
determine which
other from the failure
to
third
apply
upon
perform
state’s law would
and instead relied
the contract.
the standard set
§
forth for a
regard
common
Id.
766. With
to intentional interfer-
intentional
relations,
contractual
rela-
prospective
ence with
contractual
(Second)
tions
§§
in Restatement
provides:
(1979).
purposes
deciding
766B
For
the fed-
intentionally
improperly
One who
inter-
preemption
appeal,
accept
eral
issue in this
prospective
feres with another's
contractual re-
the district court’s definition of the elements of
subject
liability
...
lation
to
to the other for
the common law claim. The Restatement recites
pecuniary
resulting
harm
from loss of the
regard
of intentional interference
relation,
benefits
whether the interfer-
performance
with the
of a contract:
ence consists of
(a) inducing
causing
per-
or otherwise
intentionally
third
improperly
One who
inter-
prospec-
son not to enter into or
performance
feres with
continue the
of a
...
contract
person by
tive relation or
between another and a third
induc-
(b)
ing
person
preventing
causing
acquiring
or
otherwise
third
the other from
contract,
perform
liability
continuing
prospective
relation.
pecuniary
resulting
other for the
loss
Id. 766B.
join-
indispensable party whose
ECPI was an
presumed
using
invention is
from
faith,
diversity.
if
destroy
even
good
der would
acting
or unenforceable.”
invalid
later deemed
Unlimited, Inc. v. Cement
(citing Concrete
ANALYSIS
USPQ
craft,
I.
(Fed.Cir.1985)). Hence,
the court
reasoned:
presented
principal problem
‘had
patentee
]
in Concrete Unlimited
[the
courts, or
whether state
the court is
making,
right to exclude others
claims,
adjudicating
courts
selling the invention and to
using, and
tort claim for intentional
a state law
hear
...
rights
enforce those
until
with actual
con
interference
ap-
proposition
held invalid.’ This
*4
implicates
the
relations that
tractual
where,
in
pears
apply
even
as Concrete
or,
conduct
alterna
issue of
Unlimited,
plaintiff alleges that
the
the
by
tively,
preempted
a claim is
whether such
by inequitable con-
patent was obtained
that
patent law. We hold
such a
Thus,
appears
an unfair com-
duct.
it
that
preempted by
claim is not
the
state
solely
petition
on the defen-
claim based
law,
requires
federal
even if
the
rights allegedly
dant's assertion
adjudicate a
court to
federal
could
through
conduct
obtained
law,
provided the state law cause of
law,
not, as
succeed.
a matter
action includes additional elements not found
(alteration
(citation
original)
omit-
6
in
Id. at
law cause of action and
the
ted).
“Dow ... con-
Consequently, because
pat
attempt
impermissible
not an
to offer
before the
that
ceded
protection
matter ad
ent-like
competi-
[unfair
sole
for its
PTO is the
basis
by federal law.
dressed
that no tri-
tion] claim” the court concluded
the case
able issues remained and dismissed
I,
Article
Section Clause
the
entirety in an order entered March
in its
grants Congress
States
United
Constitution
slip op. at 2
1997.
Mar.
power
promote
Progress
of Sci
“[t]o
Arts, by
securing
limited
ence and Useful
Order,
accompanying
In its
Memorandum
exclusive
to Authors and Inventors the
Times
Dow’s claim for
court also denied
district
respective Writings and Dis
Right to their
attorney
35
Id.
U.S.C.
285.
fees
authority, Congress
this
coveries.” Under
prevail-
The
held that Dow was not
court
Act, 35
Patent
U.S.C.
enacted the federal
that,
party
II
because there
ing
in Count
and
(1994).
Supremacy
to the
§§ 1-376
Pursuant
exceptional
warrant-
were not
circumstances
Const,
VI,
Clause,
art.
cl.
U.S.
fees,
attorney
ing
it was unnec-
an award
they
preempted if
stand
causes of action are
essary to
whether Dow was the
determine
accomplishment and
to the
“as an obstacle
prevailing party in Count I. Id.
objectives
full
purposes
execution
appeal,
argues that
the district
On
Hines v.
Congress”
enacting
statute.
adjudicated
have
its state law
court should
Davidowitz,
S.Ct.
312 U.S.
61
competition
for unfair
and so erred
claim
(1941).
404,
Doubtless a
in
enforcement
appropriate
State
cir-
cumstances,
alty
require
goods,
agreements on
property
intellectual
un-
whether
patented
unpatented,
or
be
or
der
labeled
state contract
preempted
was not
precautionary steps
other
pre-
be taken to
regardless of whether that
prop-
intellectual
vent
being
customers
misled as to the
erty
patentable subject
consisted of
matter.
source, just
may protect
itas
businesses in
262,
See id. at
Id. at at (quoting S.Ct. Roebuck, restrictions use of 788-89). unpatented at 84 S.Ct. at objectives ideas were necessary pro These limited those Kewanee Court found to goals be threefold: providing contemplation an incentive to in- mote outside the vent, promoting the full 166, 109 disclosure inven- scheme.” at S.Ct. body protection at of tort aimed rela- the “Florida statute at 985.2 person- tionships, of in economic and some directly promotion at the some aimed [was] omitted)). (footnotes restricting plainly by substantially tort al.” tellectual creation exploit patent-like protection public’s ability to ideas offer not seek to does be free for all shall patent system property mandates inconsistent with the to intellectual use,” struck down the Supreme Court scheme. the federal statute as that, true While 167, 109 at 986. S.Ct. laws. Id. case, be the “state court” would facts of Su the standard mandated Under of an issue required to make a determination Court, law cause of action at preme the state reaching judgment on the patent law present an “obstacle” issue here does not tort, underlying this determination would pat accomplishment of the the execution only ancillary purpose.4 to its central identi None of the three factors ent laws.3 ease, any a state it well established that implicated a state Kewanee fied authority adjudicate patent court for intentional long as the action itself does questions so prospective contractual relations actual and See, e.g., Hat under the laws. arise the tortfeasor’s threats in instances where Lovorn, n. horn v. 457 U.S. pat upon infringement of sue were based (1982) 18, 72 2429 n. L.Ed.2d 824 S.Ct. It by inequitable conduct. ent obtained (“We frequently courts to decide permit state how such a state law difficult to fathom ‘collaterally’ issues that would be reserved could have discernible effect action if cause of action for the federal courts invent, the full disclosure of the incentive directly under federal law. For exam arose ideas, public principle or the that ideas variety ple, the state courts decide public domain. In domain remain in the laws.”); involving questions deed, improbable that an in seems most *6 Dep’t v. Florida Wind Elec. Co. Jacobs of to forfeit the benefits of ventor would choose 1972, 726, 728,16 USPQ2d Transp., 919 F.2d patent of fear of risk protection because (Fed.Cir.1990) (“[AJlthough a state 1974 upon tortiously liable being found based of issued power without invalidate an court is by attempting patent enforce a obtained ability on the of patent, no limitation there Moreover, pur key inequitable conduct. question of validi a state court decide protection of the pose this tort is the behind in a state court ty properly when raised which, as integrity of commercial contracts Infusaid, v. Intermedies Inc. proceeding.”); above, “traditionally are the domain of noted Minn., 129, 804 F.2d Regents the Univ. Aronson, 262, 440 at 99 law.” U.S. of of (Fed.Cir.1986) 653, USPQ 656 231 1099; Page generally, W. Keeton S.Ct. at see (“[T]here policies in acts of are no reflected al., Keeton on the Law et Prosser and of (“The require federal (1984) Congress which law of interference Torts 978 enjoin suit larger ... a court contract part of courts contract is thus one with 867, Inc., tants, course, earlier, 863 872 preemption v. F.2d was Ltd. Hollister Of as noted 2. (Fed.Cir.1988). upon a threshold Even such found in Roebuck. in- showing, of whether "the ultimate upon record from the district court 3. Based equitable na- equitable occurred is conduct law cause of action we assume that the state presented use its sound the trial court must ture” and by identical to described here is whether, upon the based discretion to determine (Second) §§ 766B Restatement materiality degrees to which the relative actual for intentional threshold, finding inequi- intent exceed the supra contractual relations. See unique under the table conduct is warranted note 1. at that case. 876. circumstances of imperative exercise of that discretion cautious the “state court” we note that finding inequitable inequitable given conduct required that a its con- would be make rendering entire in accordance with effect of duct determination drastic evidentiary law. We further note not ad- Id. at 877. We need unenforceable. necessary discretionary requirements effect, a find- any, preclusive if a state such dress what stringent. ing inequitable In- conduct subsequent on would have court determination deed, necessary prove with clear and it is litigation. materiality convincing and an in- evidence both Kingsdown Med. Consut- tent to deceive. 1476 patent li- royalties payable patent-holder under a
seeking engaged had not court is (although wherein the state or could conduct cense was held to be obviousness) validity to rule on the asked the defendant ruling invalid for and this analysis patent.”)- This remains un- not disturbed court. See at this id. regardless of whether the state law changed USPQ 785; 776 F.2d 227 at Concrete See, grounded in contract or tort. claim is Unlimited, Inc., Cementcraft, Inc. v. 81- No. e.g., Layne v. American Well Works & Bowl- 6083-CIV-GONZALEZ, slip 2 op. S.Ct. 60 er 36 (S.D.Fla. 1985). Jan. in Concrete (suit (1916) for libel slander L.Ed. 987 Unlimited, good faith enforcement of allegation infringement upon an based patent was held not to unfair com constitute did in tort and not arise under sounded case, however, petition. The instant con Ir., laws); Republic v. Gilson allegation cerns an of bad faith enforcement 655, 657-58, USPQ F.2d of a reputedly unenforceable Unlike (claim (D.C.Cir.1986) misappropriation Unlimited, the al Concrete tortfeasor here rights under a license sounded legedly knew that its unenforcea laws). and did not arise engaged ble when it market misconduct. chiefly upon by The case relied Indeed, knowledge without such there would appears holding court for its that “it that an wrong.6 be no Consequently, actionable we solely unfair claim based on the suggest do not read Unlimited to Concrete alleg rights defendant’s assertion of competition predicated that a claim of unfair edly through inequitable obtained part not, conduct could not, law, could as matter of succeed” was law, and, case, matter succeed we Cementcraft, Concrete Unlimited v. agree do with the district court that this (Fed.Cir.1985).5 USPQ F.2d particular state law cause of action turned slip op. at 6 Nov. It “solely” on conduct. noting quite pointedly worth that Exxon agree Nor do Exxon that argument basing avoided for affirmance disputed impermissible action is an Unlimited, case. In Concrete this alternative state law judgment court reversed the district court’s prohibited by conduct before the PTO as competition by of “unfair taking business Brennan, Abbott Laboratories away from the Defendant threats and (Fed.Cir.1991). infringement actions on the based fraudu *7 Laboratories, Abbott that held a state tort lently patent.” obtained Concrete Unlimit process action for abuse of could not “be ed, (inter 1539,227 USPQ 776 F.2d at at 785 remedy inequitable invoked as a for or other omitted). nal quotation marks This court unsavory parties proceedings conduct to patent-holder held that the had the to the Patent and Trademark Office.” Id. at its enforce until the was found 1355, USPQ2d at 1200. a invalid and that Such tort claim such enforcement did not competition. inappropriate Sig constitute unfair id. “would be an See collateral intru- nificantly, procedures the district court had that regulatory held sion on the of the PTO upon by guidance The other two cases relied as to effect of conduct significance. court are of less The court relied on state law causes action for intentional Inc., upon 20, Japax, Vieau v. 823 F.2d 1517— interference with contractual relations. (Fed.Cir.1987), USPQ2d 1100-02 for proposition that a court should not reach that, 6. We note to a survive motion a motion for beyond scope given controversy of a to invali summary judgment, allegation a more than mere slip op. date a at 5 Nov. knowledge patent’s unenforceability of the However, any Vieau did not concern 56(e) required. would be See Fed.R.Civ.P. causes of action under state law. The other case ("When summary judgment a for motion is made upon by relied the district court was Pro-Mold rule, supported provided as in this an ad- Plastics, and Tool Co. v. Great Lakes 75 F.3d party upon verse allega- not rest the mere (Fed.Cir.1996). USPQ2d Pro- party’s pleading, tions or denials of the adverse enforcing Mold held that a obtained party’s response, by but the adverse affidavits did conduct not constitute unfair rule, 43(a) provided otherwise set purposes must forth for of section specific showing genuine Act. facts that Lanham See id. at 75 F.3d there is a trial."). USPQ2d at 1631. Pro-Mold offers no issue for grant not to a new trial preemptive court’s decision contrary Congress’ to ... is alleged inadequacies at in the law.” Id. regulation in area because omitted). (citation 1357, USPQ2d jury causation. Ab- regarding at instructions of bott, common law abuse unlike the However at 1198. Abbott, the tort issue in process claim at preemption being Despite for intentional interfer- here claim asserted to the squarely regard at issue with abuse prospective contractual ence with actual claim, cross-appellant nor process neither or additional is not alternative relations sought that suggest this court such inequitable conduct before for preempted. Consequent- cause of action Abbott, process claim at the abuse PTO. simply not see how Abbott can be ly, we do upon entirely bad faith mis- based issue was that the tort of intentional suggest read Indeed, wrong before the PTO. is with contractual relations interference damages for which state law tort alleged and patent laws. sought no more than bad faith tort of suggests dissent the state However, the before the PTO. misconduct relations interference contractual premised upon is not tort claim at issue here essentially inequita- on an assertion of based PTO, but rather faith in the bad misconduct amounts to little more than ble conduct and upon bad faith misconduct premised attempt to use state law to derive process marketplace. Unlike the abuse damages remedy conduct. for Abbott, a tort claim for dispute has Although acknowledging that the tort rela- with contractual intentional interference elements, posits additional dissent entirely different to requires tions elements “merely masks the focus such differences required conduct before those however, judgment, these real issue.” In our Thus, example, requires the PTO. ’ primary are the issue. different elements knowledge of the contrac- the tortfeasor have PTO, later in interfering not in the but relationship with he is tort occurs tual intentional marketplace. he commit an act of and that relationship. harm that inducement every right protect its citi- A state has (Second) cmts. Restatement in their contractual rela- zens and residents h, place in elements take required i. These wrongful in- from acts of interference tions Indeed, marketplace, not before PTO. party, including a side borders being out without there the tort can be made earlier, Moreover, as noted patentee. in the PTO. any misconduct whatsoever Supreme recognized Court example, a holder of valid commercial,, relations tection of contractual knowingly brings patent who enforceable Any primarily the concern of state law. against com- infringement actions baseless then, damages, would be based award of petitor’s might also be customers right to local conduct that the state has liability. Accordingly, such tort proof regulate; of acts before PTO entirely requires different elements estab- merely paten- of a such trial evidence *8 for inten- prima a facie state tort action lish subsequent in with tee’s bad faith contacts relations, interference with contractual tional customers. preempted it a alternative or plainly is not only faith in turn is one of three Bad remedy for additional state must established to make long-established in- elements that be it is a conduct. Rather earlier, remedy improprieties for in noted the other two dependent tort out the tort. As marketplace. them- interfering the are communications the damages disruption there- the selves and Moreover, suggest- any notion that Abbott simply duplicate Nor the tort from. does tort remedies for intentional ed that state urged patent law as federal remedies are contractual relations for by available the dissent. by patent the laws must holding of is a proven inequitable conduct surely dispelled by fact that in Abbott be unenforceability brought a counterclaim for appellant also court; inter- remedy at law for tortious rela- interference with contractual intentional damages in state court. money upheld the trial ference appeal, On this court tions. acts, Thus, addition, that, wrongful given earlier, the remedies and discussed short, forum are different. all validity well-established that issues of agree cannot with the dissent’s characteriza- enforceability may adjudicated be licensing tion of the tort asserted here as based essen- disputes governed by state law and thus tially assertion of an conduct. yield conflicting results, it seems somewhat Rather, essentially tort as based we see the unpersuasive suggest possibility communications that interfere bad faith conflicting by results raised this case is true, relations. It is with contractual howev- adequate ground preemption. er, alleged ineq- ease without the that Finally, agree we do not sugges- with the uitable before the PTO there would tion allowing litigate that toDow its claim proof likely inadequate be faith. bad Nev- for intentional interference with contractual ertheless, proof the source of of bad creating relations we would be a new cause faith, just tort, pur- one element of action. The tort of intentional interfer- ported PTO, inequitable conduct before the ence with actual and contractual does not make this tort a issue relations is a cause action that has ancient preempted by federal law. origins. Prosser and Keeton trace its devel- suggests The dissent further it is opment from pater-familias undesirable for conduct to ad- early Roman bring law to action during trial of dressed family, harm done his slaves or other trump action. cannot his members of establishment through to the right of the state to consider Ordinance of England Labourers enacted in conduct as wrongful evidence of intent in a in 1349 gave employers a cause of case, any preclude more than would against employed action those who their run- addressing validity state court from away al., servants.7 Page See W. et Keeton of a simply in contract ease. We do Prosser and Keeton on the Law 979- “bright not see how the line rule” desired (1984). Although American courts were plain dissent is either in application or recognize tort, at first reluctant “the possible patent system under our federal recognized virtually tort is now everywhere settled case law. any contract, as to regardless of its charac- Any argument that this state law cause of ter.” recognized at 981. As we have provides duplication action of federal reme- regard to licensing agreements, it is dies that could conflicting lead to results law, generally law, not federal similarly unfounded. The tort of intentional governs disputes contractual even when interference with contractual relations is a adjudicated issues must be because remedy money damages improper be- patents involved matter by competitors havior marketplace. here, Similarly those contracts. state law The tort at issue all types covers of commer- governs orderly maintenance contrac- cial actors single patent- and does not out tual relations and this function is not holders for either increased deference or ad- preempted merely patents pat- scrutiny. conduct, ditional Inequitable how- presented ent issues are substance ever, provides a defense those accused those contracts. far creating from patent-holder whose was obtained action, new cause of merely we are not inter- by improper conduct in the PTO and vening to restrict a well-established state specific vides the making relief of cause of action. unenforceable. Far being duplication *9 remedies, Accordingly, the state tort because the and the federal cause of action entirely defense wrongs alleged by address different Dow for intentional interference provide and also different forms of relief. In with and actual contractual rela- (Second) 766B, him, § See also bought Restatement 'whereby they durst not work or (1979) ("As b early cmt. as 1621 the court buy.’ ... [I]n 1410 it was said that ‘if the King's Bench held one liable to another an beaten, my comers to market are disturbed or interfering action on the case for with his toll, my good I which lose I shall have a action of spective by threatening 'mayhem contracts "). trespass on the case.' and vex with suits' those who worked ent, impermissible right sublieense an and not stand as tions does execution accomplishment notifying slip op. and to the without ECPI. obstacle (D.Del. 1996). Therefore, laws and because given Sept. entirely different elements requires action rights ’783 substantial ECC’s un- from the defense Corp.’s vigorous defense and Exxon laws, must reverse we der the federal litigation, agree in this the ’783 judgment of the district court. joinder of ECPI with the district court required. was not
II. appeal that the dis- Dow’s contention CONCLUSION attorney regard fees trict court erred with competi- Because Dow’s state law unfair persuasive. is less Under U.S.C. Corp. against tion Exxon was neither exceptional cases award court “[t]he nor laws attorney prevailing fees to the reasonable with a claim under the coterminous appeal, party.” upon Based the record laws, part of the district we reverse ex- that no the district court’s determination for further judgment court’s and remand had shown in ceptional circumstances been opinion. with this proceedings in accordance clearly See case erroneous. properly court because the district Revlon, Prods. 803 F.2d Inc. v. Carson exceptional circum- found there to be no (Fed.Cir.1986). USPQ attorney permitting an award of fees court, stances we do Consequently, like district indispensable that ECPI was not an the issue of whether reach prevailing party joinder, affirm district party requiring and we we affirm those attorney judgment on the issue of court’s Ac- parts judgment. of the district court’s fees. judgment cordingly, district court’s AFFIRMED-IN-PART, REVERSED- III. IN-PART, REMANDED. in Exxon’s
We also find no merit cross-appeal. argues Exxon that the district COSTS court erred when held that ECPI was not party costs. Each to bear own indispensable party an which had to be joined pursuant to Count II to Fed.R.Civ.P. LOURIE, Judge, dissenting Circuit inquired appropriately 19. The district court part. equity good conscience the “whether proceed among parties be action should I of the respectfully I Part dissent dismissed, it, or the absent fore should reversing court’s court’s decision the district person regarded indispens being thus However, I the state law claim. dismissal of 19(b). agree We able.” Fed.R.Civ.P. affirm, respec- join III do Parts II and joinder the district court that was not re tively, court’s denial Dow’s because, matter, practical quired “as a Exxon attorney and the court’s request fees [Corp.] duty capability has both the Patents, Inc. of Exxon Chemical dismissal Dow, slip protecting ECPI’s interests.” from the case. In re op. Sept. at 12 court correct I because the district dissent (9th Cir.1986) Allustiarte, 910, 919 ly the state law claim was decided that (“Joinder required is not the absent when law; essentially preempted by it was parties’ adequately protected by interests are majority, conduct claim. Although ECPI present.”). those who are Stiffel, v. citing Roebuck & Co. patent, of the ’783 it has remains the owner 661, 140 84 S.Ct. 11 L.Ed.2d pat granted significant rights in certain Day- (1964), Corp. USPQ Compco (“ECC”), Company ent to Exxon Chemical .234, 84 S.Ct. Lighting, Brite 376 U.S. unincorporated Corp. of Exxon division USPQ 528 11 L.Ed.2d rights include the to sue for These *10 Corp., 416 v. Bicron U.S. Kewanee Oil Co. patent, to infringement right de 315, 181 USPQ 470, 1879, pat- 40 litigation 94 S.Ct. L.Ed.2d concerning ECPI in fend 1480 (1974), Quick
673
Aronson
Point Pencil
none
provides prece-
of those cases
257,
1096,
majority’s
99 S.Ct.
59
dent for the
I
440 U.S.
L.Ed.2d
decision.
believe
(1979),
Boats,
296,
USPQ
holding
preemption
1
this court’s
of
and Bonito
Abbott
201
Boats, Inc.,
prece-
Laboratories v. Brennan is
Inc. v. Thunder
489 U.S.
the closest
Craft
971,
dent
it
a
103
should lead to
similar
109
L.Ed.2d
9
S.Ct.
1346, 1355-57,
(1989),
result here.
21
USPQ2d
See 952 F.2d
1847
concludes that the state
(Fed.Cir.1991)
USPQ2d
1199-1201
law claim for intentional
(holding that a state law claim for
abuse
actual and
contractual relations
process, bottomed
allegation
on the
impermissible
does not stand as
obstacle
patentee
conduct,
engaged
accomplishment
to
and execution
law).
preempted by
patent
the federal
The
patent
laws and that
is therefore not
premised
claim here
on an asser-
preempted.
tion of
procure-
conduct in the
Supreme
none
these
Court
ment Exxon’s
us,
cases deals with the issue before
which is
Inequitable conduct is a
defense to claim
may
such a
whether
state law claim
be enter-
patent infringement
when the
essentially
tained when
bottomed
patent applicant
obtained
failure
patentee engaged
ineq-
assertion that the
comply
duty
with the
of disclosure to the
uitable conduct in the Patent and Trademark
(1997).
§
PTO.
37
C.F.R.
1.56
There
(“PTO”).
Office
ma-
cases cited
already
misconduct,
are remedies for such
jority involved either an alternative form of
including unenforceability of
patent,
see
property protection
intellectual
or enforce-
§
attorney
35 U.S.C.
fees
contract,
ment of
rather than an attack on
when the
exceptional,
case is found to be
see
(or
enforceability
validity)
of a
Likewise,
id. at
egregious
in cases of
which basically
at issue here.
subsequent
or
attempts
misconduct
baseless
Kewanee
protec-
concerned trade secret
patent,
patentee
enforce
tion,
Supreme
and the
Court concluded that
exposed
liability
under the federal anti
preclude
law does not
inventors
Equipment,
trust laws. See Walker Process
employing
secret
trade
laws for
Machinery
Corp.,
Inc. v. Food
& Chem.
protection
their
rather
seeking
pat-
than
U.S.
86 S.Ct.
15 L.Ed.2d
ent their inventions. See 416
U.S.
(1965) (fraudulent
USPQ 404
misrepresenta
Sears,
S.Ct. at 1885. In
Camp-
Roebuck and
tion);
Investors,
Real Estate
Professional
eo,
was whether state unfair
Indus., Inc.,
Inc. v. Columbia Pictures
provide patent-like
law can
pro-
S.Ct.
L.Ed.2d
against
tection
copying,
when federal
(1993)
(objectively
subjec
protect
subject
did
matter
suit).
tively
attempts
by
baseless
question. The
negative.
court held in the
pass
by asserting
these federal remedies
quite
The issue was
different from ours.
state law cause of
I
action.
believe that such
a cause of action is
because it
Aronson involved enforcement of a con
patent policy by providing
frustrates federal
provided
tract that
royalties,
damages
conduct distinct
whether
not a
had
No
issued.
from the remedies established under federal
preemption was found because enforcement
Permitting
law.
a state law claim to be
goals
contract did not conflict with the
essentially on
inequita
based
an assertion of
policies
of federal
law. See Aron
essentially
duplication
ble conduct is
son,
duct been ultimately depends on faith whether
bad inequita- procured through in fact