Alpek Polyester, SA v. Polymetrix AG (Cir. Fed. 2021) | McDonnell Boehnen Hulbert & Berghoff LLP


While the Federal Circuit’s primary focus is on patent law, as the United States Circuit Court of Appeals, questions are brought before the Court on more mundane procedural questions (which, at times decisive, do not reduce not their importance to the parties and sometimes the rest of us). One of these cases was decided on December 16 in Alpek Polyester, SA v Polymetrix AG (complicated, as should be obvious from legend, involving non-US parties and having suspected infringing activity occurring both here and abroad).

The case concerned Polymetrix’s alleged infringement of US Patents Nos. 7 790 840, 7 868 125, and 7,192,545 owned by Alpek (a Mexican company) and under exclusive license from co-applicant DAK Americas LLC (a US company), the patent application for methods of producing polyethylene terephthalate (PET) resins; since the issues on appeal were exclusively procedural, there was no need in the opinion (or here) to further delve into the scope of the claims. Defendant Polymetrix is ​​a Swiss company specializing in the supply of equipment and engineering services for the construction of factories for manufacturing PET resin (without manufacturing the resin itself, that is to say, he provides the means but not the product and therefore has not himself practiced the claimed methods).

The activity that triggered the lawsuit was Polymetrix contracting with a Polish company, Indorama Ventures Poland sp. z oo (“IVP”) in which Polymetrix equipped a manufacturing facility located in Wloclawek, Poland, to perform the patented process. Once the work was completed, Polymetrix entered a “commissioning” period during which the installation was tested (using the patented PET resin production process); During this time, Polymetrix retained ownership of the equipment and IVP withheld payment until the installation passed the appropriate tests.

Competence came to the fore in the United States when IVP sent to subsidiaries in the United States (Auriga Polymers and AlphaPet Inc.) samples of PET resin made at the Wloclawek plant using Polymetrix equipment. to perform the patented process. There have been three instances of this importation, including one in which an AlphaPet employee personally brought the sample into the country. Alpek brought an action as a result of these activities, alleging that Polymetrix had induced a violation under 35 USC § 271 (b) (the literal predicate offense falling under the provisions of § 271 (g)). While the opinion refers to “a complicated and protracted international discovery process” that followed, only three incidents merited consideration by the Court. The first concerned the failure of the defendant Polymetrix to disclose under Federal Rule of Civil Procedure 26 the identity of the director of IVP, Mr. Saini (the relevance of this failure being the use by Polymetrix of a statement to the support of a motion for summary judgment at issue in this appeal). Second, a disputed testimony in a deposition (from an Article 30 (b) (6) witness representing Auriga) that Polymetrix owned the factory in Wloclawek, Poland, supporting Alpek’s request to amend its complaint to include an allegation of direct infringement under § 271 (g). The third and final discovery dispute involved an assertion of privilege by Polymetrix over an attorney’s opinion regarding Alpek’s infringement allegations, which Alpek said had been dropped by disclosure to a potential suitor.

Polymetrix filed a motion for summary judgment which it did not violate, which the district court granted. District court dismissed Alpek’s arguments that important facts were in dispute, dismissed Alpek’s motion to strike Saini’s testimony over rule 26 breach when Polymetrix failed to identify him as someone with knowledge of the business and its activities, and found the inaccuracy in filing inadmissible under Federal Rule of Evidence 602 because the witness lacked personal knowledge regarding the importation of PET resin produced in the Polish factory using the patented process. The district court also dismissed Alpek’s request to amend the complaint as untimely. This call followed.

The Federal Circuit asserted, in an opinion from Judge Lourie joined by Judges O’Malley and Stoll. The opinion addresses the four arguments raised by Alpek on appeal:

• First, Alpek argues that the court abused its discretion by ignoring [the Rule 30(b)(6) witness’s] admission that the July 17, 2014 sample was imported into the United States “for Polymetrix” [arguing that the statement was admissible because the witness’s testimony under Rule 30(b)(6) does not require personal knowledge to be admissible].

• Second, Alpek argues that the tribunal erred in concluding that Polymetrix did not ratify the importation of PVI using the US test results. [by receiving and relying on test results it knew were produced by Auriga and AlphaPet in the U.S.]

• Third, Alpek argues that the court erred in failing to recognize the factual disputes which arose out of the ownership of the equipment by Polymetrix under an interpretation of the contract by Swedish law.[ and]

• [F]ourth, Alpek argues that the court erred in refusing to strike out the Saini statement that Polymetrix relied heavily on to support its summary judgment motion [based on Federal Rule of Civil Procedure 37].

Polymetrix’s counter-argument was based on the causal arm of § 271 (b), that is to say., that its activities did not cause IVP to import PET resin samples into the United States for analysis. Regarding Alpek’s first argument, Polymetrix argued that the witness expressed himself incorrectly due to a misunderstanding of the matter (which the witness clarified at the time during his subsequent testimony during the deposition). The Federal Circuit, applying the appropriate Eighth Circuit law to review the district court’s decision here, noted that in the Eighth Circuit, the evidence to be considered in a summary judgment must be “eligible evidence “, citing Crews c. Monarch Fire Prot. Dist., 771 F.3d 1085, 1092 (8th Cir. 2014) (emphasis in original) (citing Nooner v. Norris, 594 F.3d 592, 603 (8th Cir. 2010). Under the applicable abuse of discretion standard, the Federal Circuit found no abuse (noting that the witness did not testify at trial and “did not want to [have been] admissible at trial under Federal Rule of Evidence 801 (d) (2) “nor Federal Rule of Civil Procedure 32 (a) (3) regarding opposing party testimony. The opinion also distinguished an apparently contrary precedent in General Mills Operations, LLC v Five Star Custom Foods, Ltd., 703 F.3d 1104, 1110 (8th Cir. 2013), because the contested testimony was not that of a witness from the opposing party. Finally, the Federal Circuit did not find Alpek’s argument convincing as it relied on two words (“for Polymetrix”) “taken from a question in a deposition in the broader context of a protracted discovery process which lasted for years “and was asserted by Alpek for a pushing argument that was” contrary to the overwhelming majority of the evidence which shows that Polymetrix had no knowledge or concern as to where, when and how IVP performed performance tests “. In the opinion of the panel, the evidence showed that the witness was simply wrong. The Court found no real question of fact of importance in this case which would justify the “delay and expense” of a trial.

With respect to Alpek’s second argument, the Federal Circuit saw no real question of material fact about the evidence, which the Court considered to be supported only by “a conclusive assertion by [Alpek’s] According to the Opinion, the “overwhelming majority of the evidence” supported the conclusion that AlphaPet was not the source of the data on which Polymetrix relied regarding the performance of the Polish plant (including the agreement with the district court according to which Alpek blunder by asserting that these data “correspond[ed] at the top almost exactly, “the opinion stating that” if the AlphaPet test results were truly the source of the data for the Polymetrix report, we can discern no reason why the two data sets would not match. exactly“(emphasis in opinion).

As to Alpek’s third argument, the Federal Circuit agreed with the district court that details of Swedish contract law, asserted to support Alpek’s contention that under that law Polymetrix was responsible for the activities of the Polish factory, were “inappropriate”. “Under US law,” the opinion argued, “the mere fact that Polymetrix owned the plant equipment is wholly insufficient for Alpek to meet its burden of proving that Polymetrix took active steps to induce IVP to be violated ”, citing MGM Studios Inc. v. Grokster, Ltd., 545 US 913, 935–36 (2005), in support of this principle.

Finally, the court rejected Alpek’s fourth argument, based in part on the extent of the district court’s discretion over discovery and application of the rules of civil procedure. The Federal Circuit saw none of the surprise or harm the rule was supposed to prevent, given the “more than 1,000 documents produced during the discovery” bearing the witness’s name.

Having waived the summary judgment portion of the appeal, the panel turned to the district court’s dismissal of Alpek’s request to amend his complaint. Here, the court found no justification for Alpek’s failure to file his petition by the deadline set by the district court, and the panel rejected Alpek’s claims that the testimony of a witness presented during a deposition after the deadline alerted him to the factual basis of the complaint modification, that is to say., that Polymetrix was a literal infringer under § 271 (g). And Alpek’s arguments, according to opinion, “consist[ed] simple disagreement with the investigating judge’s point of view on the facts.

The final issue considered by the Court was Alpek’s motion to compel the production of an attorney’s opinion on the basis of a waiver due to disclosure to Polymetrix’s suitor. The court agreed with Polymetrix that the panel need not address the issue because it “has no bearing on the district court’s summary judgment decision.” The opinion notes that Alpek was responsible for showing that Polymetrix caused IVP’s Infringement of the Patents at Issue, While the Notice, Even If Presented in Evidence, Would Only Deal with Polymetrix intention induce a forgery, citing Omega Patents, LLC v CalAmp Corp., 920 F.3d 1337, 1352-53 (Fed. Cir. 2019). Since the basis of the district court for summary judgment was Alpek’s failure to establish Polymetrix’s causation of the alleged PVI offense, “the question of intention was not taken into account in the granting of summary judgment by the district court ”according to the Court (emphasis added in the opinion). This question, given the confirmation by the court of the granting of summary judgment by the district court, was therefore moot according to the panel.

Alpek Polyester, SA v Polymetrix AG (Fed. Cir. 2021)
Unprecedented layout
Panel: circuit judges Lourie, O’Malley and Stoll
Opinion of circuit judge Lourie


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