Justia U.S. 4th Circuit Court of Appeals Opinion Summaries

Honeywell International, a Delaware corporation, and OPTO Electronics, a Japanese company, are competitors in the barcode-scanning equipment market. In May 2019, Honeywell sued OPTO for patent infringement, alleging that OPTO's barcode products infringed on seven of Honeywell's patents. The parties settled in January 2020 with a patent-licensing agreement, allowing OPTO to use Honeywell's patents in exchange for royalty payments. In March 2021, Honeywell audited OPTO and claimed that OPTO had underreported its revenues, leading to a dispute over the definition of "2D Barcode Products." Honeywell then sued OPTO for breach of contract in September 2021, alleging unpaid royalties.The United States District Court for the Western District of North Carolina handled the case. A jury found that OPTO's laser-scanning barcode readers were "2D Barcode Products" but awarded Honeywell only $859,741. The district court also rejected OPTO's counterclaim of patent misuse, concluding that Honeywell had not engaged in such conduct. Both parties filed post-trial motions, which the district court denied. Honeywell sought attorney's fees, and OPTO moved to set aside the jury verdict, but both requests were denied.The United States Court of Appeals for the Fourth Circuit reviewed the case. The court determined that it could not reach the merits because the United States Court of Appeals for the Federal Circuit has exclusive appellate jurisdiction over the appeal due to the patent-related counterclaim asserted by OPTO. The Fourth Circuit dismissed the appeal, allowing the parallel appeal pending in the Federal Circuit to proceed. The main holding was that the Federal Circuit has exclusive jurisdiction over appeals involving patent claims and counterclaims, even if the primary dispute is over a contract. View "Honeywell International, Inc. v. OPTO Electronics Co., Ltd." on Justia Law

Plaintiff and its foreign subsidiaries (collectively, “Eli Lilly”) applied to the district court under 28 U.S.C Section 1782 for an order requiring Novartis Pharma AG to provide discovery for use in ongoing patent litigation between the two companies. After Novartis intervened and objected to Eli Lilly’s application, the district court entered an order denying the application.   The Fourth Circuit affirmed and addressed two grounds. The district court held that Novartis was not “found” in the Eastern District of Virginia because it was not physically present there. Eli Lilly contends that the court erred in interpreting the word “found” so restrictively, arguing instead that a person is “found” within a district for purposes of Section 1782 when it is “within the personal jurisdiction” of the district court, extending to “the full reach of personal jurisdiction” under the Due Process Clause.   Here, in view of the definitions in legal dictionaries and Supreme Court opinions, the court presumed that when Congress similarly used “found” in Section 1782, it intended that the same meaning apply — that a corporation is found where it is physically present by its officers and agents carrying on the corporation’s business. Thus, the district court acted in conformance with the requirements of Section 1782 when it denied Eli Lilly’s application to issue a discovery order directed against Novartis on the ground that Novartis was not found in the Eastern District of Virginia. Further, the court wrote it is apparent that the factors addressed by the district court fall squarely within those factors identified by the Supreme Court in Intel as relevant. View "Eli Lilly and Company v. Novartis Pharma AG" on Justia Law