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Merial Ltd. v. Cipla Ltd.

United States Court of Appeals for the Federal Circuit

May 31, 2012, Decided

2011-1471, 2011-1472

Opinion

 [***1004]  [*1288]   Lourie, Circuit Judge.

Cipla Ltd. ("Cipla") joins with Velcera, Inc. and Fido-Pharm, Inc. (collectively, "Velcera") in appealing from a judgment entered by the United States District Court for the Middle District of Georgia in favor of Merial Ltd. and Merial SAS (collectively, "Merial") holding Cipla in contempt for violating an earlier injunction and holding Velcera in contempt for acting in concert with Cipla to violate that injunction. Merial Ltd. v. Cipla Ltd., No. 3:07-CV-125 (CDL), 2011 U.S. Dist. LEXIS 65639, 2011 WL 2489753 (M.D. Ga. June 21, 2011) ("Contempt Order"). For reasons set forth below, we affirm the district court's judgment.

Background

The Patented Pest Control Technology

This appeal concerns patented compositions for protecting domestic dogs and cats from infestation with ectoparasites, e.g., fleas and ticks. In particular, the dispute centers on topically applied or "spot on" veterinary compositions containing pesticidal N-phenylpyrazole derivatives, such as fipronil, applied directly to the skin of an animal. BASF's U.S. Patent 5,232,940 ("the '940 patent"),  [**3] now expired, claimed fipronil and fipronil-based compositions as well as methods of using such compositions for pest control. Merial, as the exclusive licensee of the '940 patent, developed commercially successful spot-on fipronil compositions sold under the brand name Frontline.

In addition to producing fipronil-only products, Merial devised dual-acting pest control compositions covered by U.S. Patent 6,096,329 ("the '329 patent"). In particular, the '329 patent claims spot-on compositions containing fipronil combined with a second active ingredient—specifically, an insect growth regulator ("IGR"). In contrast to pesticides, which work through direct toxicity, IGRs act not by killing individual parasites but rather by interrupting the life cycle within a parasite population. The '329 patent discloses numerous IGRs—such as methoprene, for example—that mimic natural insect hormones to prevent immature or juvenile-stage parasites from reaching reproductive maturity, thereby limiting and eventually depleting an infestation. In the pesticideplus-IGR compositions disclosed in the '329 patent, the paired active ingredients complement one another through their distinct methods of action to  [**4] achieve improved pest protection relative to either agent administered alone. Merial markets compositions combining fipronil and methoprene as Frontline Plus, the leading veterinary [***1005]  flea and tick treatment in the United States.

The 2008 Default Judgment

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681 F.3d 1283 *; 2012 U.S. App. LEXIS 10982 **; 103 U.S.P.Q.2D (BNA) 1001 ***; 82 Fed. R. Serv. 3d (Callaghan) 959; 2012 WL 1948879

MERIAL LIMITED AND MERIAL SAS, Plaintiffs-Appellees, and BASF AGRO B.V., Plaintiff, v. CIPLA LIMITED, Defendant-Appellant, and VELCERA, INC. AND FIDOPHARM, INC., Defendants-Appellants, and ARCHIPELAGO SUPPLIERS, ARROWTARGET ENTERPRISES LTD., GENERIC PETMEDS, INHOUSE DRUGSTORE, LISA PERKO, PETCARE PHARMACY, AND PETMEDS R US, Defendants.

Subsequent History: Motion denied by, Injunction denied by, Findings of fact/conclusions of law at BASF Agro B.V. v. Cipla Ltd., 2012 U.S. Dist. LEXIS 78216 (M.D. Ga., June 5, 2012)

Prior History:  [**1] Appeals from the United States District Court for the Middle District of Georgia in Case No. 07-CV-0125, Judge Clay D. Land.

Merial Ltd. v. Cipla Ltd., 2011 U.S. Dist. LEXIS 65639 (M.D. Ga., June 21, 2011)

Disposition: AFFIRMED.

CORE TERMS

district court, personal jurisdiction, infringement, injunction, default judgment, contempt proceeding, contempt, patent, contempt order, inducement, long-arm, designate, fipronil, vacate, manufacture, products, default, contacts, compositions, allegations, consent to jurisdiction, importation, methoprene, enjoined, parties, extraterritorial, colorable, non-party, spot-on, courts

Patent Law, Jurisdiction & Review, Standards of Review, Clearly Erroneous Review, Personal Jurisdiction & Venue, General Overview, De Novo Review, Abuse of Discretion, Remedies, Equitable Relief, Injunctions, Civil Procedure, Jurisdiction, In Rem & Personal Jurisdiction, Constitutional Limits, In Personam Actions, Long Arm Jurisdiction, Minimum Contacts, Due Process, Service of Process, Methods of Service, Foreign Service, Pretrial Judgments, Default & Default Judgments, Default Judgments, Relief From Default, Preliminary Considerations, Venue, Infringement Actions, Infringing Acts, Business & Corporate Compliance, Indirect Infringement, Injunctions, Contempt