Alpek Polyester, S.A., DAK Americas LLC, et al. v. Polymetrix AG

Docket No. 2021-1706 (https://cafc.uscourts.gov/opinions-orders/21-1706.OPINION.12-16-2021_1880727.pdf) (Non-precedential)

LOURIE, O’MALLEY, STOLL

December 16, 2021

Brief Summary:  DC grant of SJ of no induced infringement by importation affirmed. Summary:  Alpek/DAK appealed DC grant of summary judgment (SJ) to Polymetrix of no infringement of the patents-in-suit (US 7,790,840; 7,868,125; and 7,192,545) directed to methods for producing polyethylene terephthalate (“PET”) used in bottles and containers.  Alpek is a Mexican company and DAK is an affiliate and exclusive licensee of Alpek’s patents-in-suit.  The FC panel opinion explains that “Polymetrix does not itself manufacture PET resin; rather, Polymetrix manufactures and sells polymer processing equipment, including equipment that uses Polymetrix’s EcoSphereTM technology.”  Polymetrix had a contract with IVP of Poland to equip a manufacturing plant in Poland and retained ownership of the installed equipment “while IVP conducted performance tests… but there is no indication that the contract specified who was required to perform the tests or where they would be performed.”  “On three occasions,” the FC panel opinion explains, “IVP sent one or more samples of PET to one of its affiliate laboratories…in the United States” and “Alpek accused Polymetrix of actively inducing infringement of the patents-in-suit under 35 U.S.C. § 271(b) by causing IVP to import into the United States a product produced by a patented process.”  Alpek argued the DC abused its discretion in granting SJ by disregarding its witness’s admission that a sample “was brought into the United States ‘for Polymetrix’” that he later qualified should have been “for IVP”, “by finding that Polymetrix did not ratify IVP’s importation by using test results from the United States”, “failing to recognize fact disputes that stem from Polymetrix’s ownership of the equipment under a Swedish law interpretation of the contract”, and by declining to strike a witness “declaration upon which Polymetrix heavily relied”.  Polymetrix argued “that causation is an essential element of induced infringement” and Alpek produced “no evidence…that Polymetrix caused IVP to import any product into the” US.  The FC panel found no abuse of discretion under Eighth Circuit law regarding the importation witnesses’ testimony because contradicted it and he “later explicitly testified that he had misheard the question and misspoke during his answer.”  The FC panel also found “Alpek hung a huge portion of its theory on an unsupportable piece of evidence—here, a conclusory assertion by its expert” and did not show the data from a Polymetrix report came from a US company.  The FC panel also found that a Swedish contract law question was not at issue here, but only whether Alpek had shown causation “under American law” and ownership of the equipment “is wholly insufficient” to show “Polymetrix took active steps to induce IVP to infringe” (MGM, US 2005; Richo, FC 2008).  Alpek’s arguments regarding the stricken witness deposition was also rejected.  The FC panel also found no abuse of discretion in the DC’s denial of Alpek’s motion to amended.  Alpek’s arguments regarding its motion to compel production of Polymetrix’s counsel’s opinion, but the FC panel disagreed because “’intent’ and ‘causation’ are two separate required elements to prove induced infringement” (Omega Patents, FC 2019), and the opinion would only have been relevant to the intent element while the DC had already correctly found no causation (Hester, FC 1998).  Thus, the DC decisions were affirmed.

Patrick Halloran

Pat has a Ph.D. in Microbiology and Immunology from The University of Health Sciences / The Chicago Medical School (now the Rosalind Franklin Institute (North Chicago, IL) (1994)). He also completed post-doctoral studies at The National Cancer Institute (1994-1996) where he developed novel…

Pat has a Ph.D. in Microbiology and Immunology from The University of Health Sciences / The Chicago Medical School (now the Rosalind Franklin Institute (North Chicago, IL) (1994)). He also completed post-doctoral studies at The National Cancer Institute (1994-1996) where he developed novel approaches for gene therapy of melanoma. Pat has been an attorney (IL) since 1999 after graduating from Chicago-Kent College of Law, which was recently ranked as one of the top five law schools for Intellectual Property in the U.S. (U.S. News and World Report link). Pat also has a B.A. in Biology from Augustana College (Rock Island, IL; 1989) where he was on two NCAA Division III National Championship football teams (1985, 1986). He currently resides in Center Valley, PA.