Wesley Jessen Corp. v. Bausch & Lomb, Inc.

• Decision Date: 03 April 2003
• Docket Number: No. Civ.A. 01-294-KAJ.,Civ.A. 01-294-KAJ.
• Parties: WESLEY JESSEN CORPORATION, Plaintiff, v. BAUSCH & LOMB, INC., Defendant.
• Court: U.S. District Court — District of Delaware

Page 228

256 F.Supp.2d 228

WESLEY JESSEN CORPORATION, Plaintiff, v. BAUSCH & LOMB, INC., Defendant.

No. Civ.A. 01-294-KAJ.

United States District Court, D. Delaware.

April 3, 2003.

Andre G. Bouchard, and Karen L. Pascale, Bouchard, Margules & Friedlander, Wilmington, DE, for plaintiff, Of Counsel: Raphael V. Lupo, Charles R. Work, Kenneth L. Cage, Thomas P. Steindler, and Daniel Bucca, McDermott, Will & Emery, Washington, DC.

Jack B. Blumenfeld, Morris, Nichols, Arsht & Tunnell, Wilmington, DE, for defendant, Of Counsel Edward W. Remus, Priscilla F. Gallagher, Alejandro Menchaca and Troy A. Groetken, McAndrews, Held & Malloy, Ltd, Chicago, IL.

MEMORANDUM OPINION

JORDAN, District Judge.

I. INTRODUCTION

Plaintiff Wesley Jessen Corporation ("Wesley Jessen") moves the Court for an order to show cause why defendant Bausch & Lomb, Inc. ("Bausch & Lomb") should not be held in civil contempt for violating the terms of a Court imposed injunction (see Docket Item ["D.I."] 179 at 7-8, D.I. 180 at ¶ 1) prohibiting Bausch & Lomb from further infringing Wesley Jessen's U.S. Patent No. 4,711,943 (issued Dec. 8, 1987) (the "'943 patent"). (D.I.182.) In conjunction with its motion, Wesley Jessen seeks an order permitting discovery into the allegedly infringing activities of Bausch & Lomb. (D.I. 182 at ¶ 2; D.I. 183 at 1, 8.)

II. BACKGROUND

Wesley Jessen filed this patent infringement suit against Bausch & Lomb on May 3, 2001. (See D.I. 1.) The case came to trial in June, 2002, and, after a five day bench trial, the Court¹ held that Bausch & Lomb infringed Wesley Jessen's '943 patent. (D.I. 146 at 59-74; 147 at ¶ 1.) Wesley Jessen sought no damages, opting instead for a permanent injunction against further infringement of the '943 patent by Bausch & Lomb. (D.I. 146 at 103.) On June 26, 2002, the Court entered a permanent injunction enjoining and restraining "Bausch & Lomb ... [,] its officers, subsidiaries, affiliates, entities controlled by Bausch & Lomb, agents, servants, employees and those persons in active concert or participation with them ... from making, using, offering for sale, or selling in the United States contact lens materials and contact lenses made from the material known as Balafilcom A and the contact lenses marketed under the trade name Pure Vision." (D.I. 147 at 2, 115.) Wesley Jessen now alleges that Bausch & Lomb has violated the terms of the Court's injunction by shipping from the United States to a Waterford, Ireland production facility both Pure Vision contact lenses and components of PureVision lenses.² (D.I. 182 at ¶ 1.)

III. STANDARD OF REVIEW

Wesley Jessen must prove three elements by clear and convincing evidence to prevail on a motion for civil contempt: (1) that there was a valid court order, (2) that Bausch & Lomb had knowledge of the order, and (3) that Bausch & Lomb disobeyed the order. Roe v. Operation Rescue, 54 F.3d 133, 137 (3d cir.1995). To obtain discovery based on allegations of civil contempt, Wesley Jessen must make a prima facie showing that a court order has been disobeyed. N.W. Controls, Inc. v Outboard Marine Corp., 349 F.Supp. 1254, 1256 (D.Del.1972).

IV. DISCUSSION

1. The Parties' Arguments

There is no dispute between the parties regarding the validity of the Court imposed injunction in this case. (See generally D.I. 183; D.I. 184; D.I. 185; D.I. 190; D.I. 192.) The parties also do not dispute that Bausch & Lomb knew of the injunction. (Id.) The parties' dispute centers on whether Bausch & Lomb's export of Pure-Vision contact lenses and components of Pure Vision contact lenses contravenes the prohibition in the Court's injunction against making, using, offering for sale, or selling the '943 patented invention in the United States. (D.I. 183 at 2-7; D.I. 184 at 5-16; D.I. 185 at 1-10; D.I. 192 at 1-2.) The parties also dispute whether Wesley Jessen's contempt allegations warrant discovery into these matters, and whether 35 U.S.C. § 271(f)(1) or (f)(2)³ should be read into the Court's injunction. (Id.)

Citing Johns Hopkins University v. Cellpro, Inc., 152 F.3d 1342 (Fed.Cir.1998), Bausch & Lomb argues that exporting patented inventions is not patent infringement because it is not a "use" of the invention. (D.I. 184 at 9) (citing Cellpro at 1366.) Bausch & Lomb further argues that its activities cannot constitute a prohibited "offer to sell" because case law provides that an "offer to sell" is not an act of infringement unless "[t]he sale itself, the shipment of the product, the delivery of the product" would be in the United States. (D.I. 190 at 17-18) (discussing Cybiotronics, Ltd. v. Golden Source Electronics, Ltd., 130 F.Supp.2d 1152 (C.D.Cal. 2001); Quality Tubing, Inc. v. Precision Tube Holdings Corp., 75 F.Supp.2d 613 (S.D.Tex.1999).) This is so, reasons Bausch & Lomb, "because the U.S. patent statutes don't control overseas activity. They can't reach overseas activity." (Id. at 18.) Therefore, maintains Bausch & Lomb, its activities do not contravene the Court's injunction because it did not "offer to sell" or "sell" the '943 patented invention in the United States. (Id,; see also D.I. 184 at 14-16.) Bausch & Lomb further asserts that Wesley Jessen has failed to make a prima facie showing that Bausch & Lomb has engaged in any prohibited activity and therefore it would be inappropriate to allow Wesley Jessen to conduct any discovery. (Id.)

As to 35 U.S.C. § 271(f)(1) and (f)(2), Bausch & Lomb, noting that the express language of the Court's injunction does not enjoin activity under § 271(f)(1) or § 271(f)(2), argues that under Supreme Court, Third Circuit, and Federal Circuit authority, the Court cannot read into the injunction "activities not specifically prohibited." (Id. at 11-12 (citing Terminal R.R. Ass'n of St. Louis v. United States, 266 U.S. 17, 45 S.Ct. 5, 69 L.Ed. 150 (1924); Ford v. Kammerer, 450 F.2d 279 (3d Cir. 1971); KSM Fastening Sys., Inc. v. H.A. Jones Co., Inc., 776 F.2d 1522 (Fed. Cir.1985)).) (D.I. 184 at 11-14.)

For its part, Wesley Jessen argues that Bausch & Lomb's exporting activities amount to an infringing "use," "offer to sell," or "sale" of the '943 patented invention. (D.I. 183 at 2-4; D.I. 185 at 1-7; D.I. 192 at 1-3.) Wesley Jessen argues that Cellpro does not control the present situation because, unlike Cellpro, the infringing products in this case were made after the patent issued and were exported after the Court imposed its injunction. (D.I. 183 at 3-4; D.I. 185 at 1-3.) Moreover, asserts Wesley Jessen, even if Cellpro were controlling, the shipments at issue here, in and of themselves, amount to patent infringement in contempt of the Court's injunction because the shipping amounts to a "use" of the patented invention within the United States. (D.I. 183 at 3-4; D.I. 185 at 4-7.)

Wesley Jessen also contends that the shipments abroad were preceded by an "offer to sell" the patented invention in the Untied States, and, therefore, under Rotec Indus., Inc. v. Mitsubishi Corp., 215 F.3d 1246 (Fed.Cir.2000), Bausch & Lomb has infringed the '943 patent and violated the injunction. (D.I. 183 at 3-4; D.I. 185 at 2-4; D.I. 192 at 1-3.) Similarly, Wesley Jessen argues that a "sale" of the infringing products may have occurred in the United States before the products were exported, constituting another violation of the Court's injunction. (Id.)

As to components of PureVision lenses, Wesley Jessen argues that the shipping of those components constitutes infringement under 35 U.S.C. § 271(f)(1) or (f)(2) and thus is in contravention of the Court's injunction because "the injunction should be read to cover all acts of infringement." (D.I. 183 at 4-7, D.I. 185 at 8-10; D.I. 190 at 8-10.) Finally, regarding discovery, Wesley Jessen contends that, at a minimum, Bausch & Lomb's activities warrant an order permitting discovery into Bausch & Lomb's allegedly infringing and contemptuous activities. (D.I. 182 at ¶ 2; D.I. 183 at 1, 8.)

2. Analysis

a. "use"

The Court is unpersuaded by Wesley Jessen's argument that exporting or shipping patented inventions to foreign destinations constitutes an infringing "use" under § 271(a). It stretches the fair meaning of the word "use" beyond recognition to say that shipping a product is a use of the product. More to the point, however, the Federal Circuit has already held that "neither export from the United States nor use in a foreign country of a product covered by a United States patent constitutes infringement."⁴ Cellpro, 152 F.3d at 1366. It follows that the export of a patented invention, even if motivated by commercial interests, cannot, in and of itself, be an infringing "use" of the patented invention. Bausch & Lomb, therefore, did not "use" Wesley Jessen's patented invention by shipping PureVision contact lenses and components of PureVision contact lenses to Waterford, Ireland.

b. "offer to sell" and "sale"

In 1994, Congress amended 35 U.S.C. § 271(a) to add to the list of activities that constitute patent infringement the unauthorized "offer to sell" a patented invention. Uruguay Round Agreements Act, Pub.L. No. 103-465, § 533(a), 108 Stat. 4809, 4988 (1994). On January 1, 1996, that amendment took effect. See id. § 534, 108 Stat, at 4990. The Federal Circuit first addressed that new form of infringement in 3D Sys., Inc. v. Aarotech Labs., Inc., 160 F.3d 1373, 1378 (Fed.Cir. 1998).

At issue in 3D Systems was whether promotional letters, order solicitations, and price quotations directed at residents of plaintiffs forum state by an out-of-state defendant created minimum contacts with the forum state to establish personal jurisdiction over the defendant. Id. at 1378-79. The Federal Circuit applied the test for personal jurisdiction set forth in Akro Corp. v. Luker, 45 F.3d 1541, 1545-46 (Fed.Cir.1995), and held that the defendant's contact with the forum state was sufficient to establish personal jurisdiction. 3D Systems., 160 F.3d at 1378-80. In addressing the second prong⁵ of the A...