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United States Court of Appeals for the Federal Circuit
April 7, 2006, Decided
[***1583] [*1359] MICHEL, Chief Judge.
Breckenridge Pharmaceutical, Inc. ("Breckenridge") appeals the decision of the United States District Court for the Southern District of Florida dismissing for lack of personal jurisdiction its claims of tortious interference, unfair competition, and declaratory judgment of non-infringement against patent holder, Metabolite Laboratories, Inc. ("Metabolite"). Breckenridge Pharm., Inc. v. Metabolite Labs., Inc., 348 F. Supp. 2d 1335 (S.D. Fla. 2004) (Breckenridge). Breckenridge also appeals the district court's subsequent grant of summary judgment on all claims to PamLab, L.L.C. [**2] ("PamLab"), the exclusive licensee of the patents at issue. Breckenridge Pharm., Inc. v. Metabolite Labs., Inc., 2005 U.S. Dist. LEXIS 38966, No. 04-80090-CIV-COHN (S.D. Fla. May 17, 2005) (PamLab). The district court held that the patent-related claims could not proceed without Metabolite, an indispensable party, and that the state law claims were preempted under Federal Circuit law. Id. Because the district court erroneously concluded that it lacked personal jurisdiction over Metabolite, and because there are genuine disputes of material fact with respect to the state law claims, the district court incorrectly dismissed Metabolite and granted summary judgment to PamLab. Therefore, we reverse the dismissal of Metabolite, vacate the grant of summary judgment to PamLab, and remand.
Metabolite, a Colorado corporation, is the holder of patents for a method of controlling hyperhomocysteinemia, a condition involving elevated serum metabolite levels, which is an emerging risk factor for [*1360] heart and vascular disease, and its principal business involves licensing its patents to pharmaceutical manufacturing companies. Through an exclusive license of the Metabolite patents, co-defendant PamLab, a Louisiana [**3] corporation, manufactures and distributes a prescription-only vitamin product containing a specific formulation of B12, folic acid and B6 marketed as FOLTX, which it promotes to doctors and clinicians throughout the country. Breckenridge, a generic drug company headquartered in Florida, manufactures a similar product, marketed as "Folbee", which it sells to large pharmacies and retailers--including Walgreens, Eckerd, and Rite Aid--as a substitute for FOLTX.
On December 18, 2003, Metabolite and PamLab filed suit in the United States District Court for the District of Colorado alleging that Breckenridge had infringed the Metabolite patents by offering to sell Folbee to drug wholesalers and retailers as a generic equivalent to FOLTX. Following the district court's denial of the plaintiffs' motion for a temporary restraining order ("TRO") on December 23, 2003, the plaintiffs voluntarily dismissed the suit.
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444 F.3d 1356 *; 2006 U.S. App. LEXIS 8507 **; 78 U.S.P.Q.2D (BNA) 1581 ***
BRECKENRIDGE PHARMACEUTICAL, INC., Plaintiff-Appellant, v. METABOLITE LABORATORIES, INC., and PAMLAB, L.L.C., Defendants-Appellees.
Subsequent History: Rehearing denied by, Rehearing, en banc, denied by Breckenridge Pharm., Inc. v. Metabolite Labs., Inc., 2006 U.S. App. LEXIS 14551 (Fed. Cir., May 30, 2006)
On remand at, Motion granted by Breckenridge Pharm., Inc. v. Metabolite Labs., Inc., 2006 U.S. Dist. LEXIS 102773 (S.D. Fla., Aug. 2, 2006)
Sanctions disallowed by, Motion denied by Breckenridge Pharm., Inc. v. Metabolite Labs., Inc., 2007 U.S. Dist. LEXIS 5108 (S.D. Fla., Jan. 24, 2007)
Prior History: [**1] Appealed from: United States District Court for the Southern District of Florida. Judge James I. Cohn.
Breckenridge Pharm., Inc. v. Metabolite Labs., Inc., 2005 U.S. Dist. LEXIS 38966 (S.D. Fla., May 17, 2005)Breckenridge Pharm., Inc. v. Metabolite Labs., Inc., 348 F. Supp. 2d 1335, 2004 U.S. Dist. LEXIS 25653 (S.D. Fla., Dec. 3, 2004)
Disposition: REVERSED, VACATED and REMANDED.
Metabolite, district court, patent, letters, personal jurisdiction, licensee, forum state, infringement, distributor, license agreement, cease and desist, non-infringement, license, due process, non-patent, correctly, contacts, exercise of personal jurisdiction, patent law, unfair, exclusive license, declaratory, residents, grant of summary judgment, federal district court, state law claim, headquartered, purposefully, due process requirement, tortious interference
Civil Procedure, In Rem & Personal Jurisdiction, In Personam Actions, Long Arm Jurisdiction, Minimum Contacts, Patent Law, General Overview, Torts, Procedural Matters, Preemption, Evidence, Burdens of Proof, Burden Shifting, Jurisdiction & Review, Personal Jurisdiction & Venue, Business Relationships, Intentional Interference, Elements, Antitrust & Trade Law, Regulated Practices, Trade Practices & Unfair Competition, Jurisdiction, Constitutional Limits, Allocation, Foreign Defendants