Minnesota Patent Litigation Wrap-Up — June and July 2019


This post continues our monthly summary of patent litigation in the District of Minnesota, including short summaries of various substantive orders issued in pending cases.

ecoNugenics, Inc. v. Bioenergy Life Science, Inc., 19-cv-00351 (JNE/DTS) (D. Minn. May 7, 2019)

Plaintiff ecoNugenics objected to the Magistrate Judge's order requiring it to pay costs and attorney's fees incurred by Defendant Bioenergy Life Science, Inc. The Magistrate Judge's order was previously summarized in Fish's May 2019 Minnesota Patent Litigation Wrap-Up blog available at: Judge Ericksen affirmed the Magistrate Judge's order.

Judge Ericksen began her order by noting that ecoNugenics did not properly seek reconsideration because it failed to obtain permission to file a motion to reconsider under Local Rule 7.1. In any event, she found that ecoNugenics' arguments had no merit. She first noted that the request for attorney's fees was sufficiently discernible because counsel for Bioenergy provided partially redacted copies of its time entries to ecoNugenics and an unredacted copy to the Magistrate Judge. She next found that it was proper for the Magistrate Judge to stay this action pending payment of the attorney's fees.

Carlson Pet Products, Inc., v. North States Industries, Inc., 17-cv-2529 (PJS/KMM) (D. Minn. July 9, 2019)

Magistrate Judge Menendez considered two issues related to the proposed protective order in this case, granting in part and denying in part the relief sought by Defendant North States Industries. First, Judge Menendez ruled that the protective order should include several tiers of confidentiality designations including "Confidential" and "Confidential — Attorneys' Eyes Only." In particular, Judge Menendez agreed that two identified non-attorney North States Industries employees should be allowed to review "Confidential" information, and it was unlikely that everything produced would need the more restrictive "Confidential — Attorneys' Eyes Only" designation.

Next, Judge Menendez considered the prosecution bar that North States Industries sought. Though the protective order already prohibited anyone from using another party's confidential information for purposes other than the litigation, North States Industries proposed that the protective order include a prosecution bar to prevent Carlson's litigation attorneys from prosecuting Carlson's patents. Judge Menendez agreed that a prosecution bar was appropriate, but narrowed the prosecution bar that North States Industries proposed.

First, Judge Menendez found that Carlson's litigation counsel were also involved in competitive decision-making for Carlson. Carlson's litigation counsel included attorneys who represented it on a variety of legal matters including drafting claims, strategic counseling, and other legal work. Carlson did not dispute that these attorneys were involved in competitive decision-making.

Next, Judge Menendez found that the exchange of litigation information created a risk of an inadvertent use of North States Industries' confidential information by Carlson decision-makers. She thus examined the duration, scope of preventive activities, and subject matter covered by the prosecution bar. After reviewing case law, Judge Menendez held that the duration of the prosecution bar should be one year from the entry of a final judgment in the District of Minnesota. Judge Menendez found the proposed scope of activities prohibited by the prosecution bar to be appropriate, and prevented Carlson's litigation counsel from a variety of tasks related to the technology of the patents-in-suit, such as preparing and filing new patent applications, providing legal advice relating to United States and foreign prosecution, invention identification, invention evaluation, and more. Finally, Judge Menendez found that the subject matter covered by the prosecution bar should be patent applications relating to the technology area of the patents-in-suit. Judge Menendez recognized that Carlson was faced with the difficult choice of continuing to have its long-term representatives assist in the litigation or continue providing other legal advice, but Carlson had several decision-making attorneys and could choose their litigation counsel among them.

Grupo Petrotemex, S.A. De C.V. and DAK Americas LLC v. Polymetrix AG, 16-cv-2401 (SRN/HB) (D. Minn. July 16, 2019) [1]

Magistrate Judge Bowbeer denied Defendant Polymetrix's July 2, 2019 Letter Request to stay its obligations to comply with the Court's May 24, 2019 Order, which granted in part and denied in part Plaintiff Grupo Petrotemex, S.A. De C.V. and DAK Americas LLC's Renewed Motion to Compel.[2] In the May 24, 2019 Order, the Court, applying a balancing test, found Polymetrix must produce relevant documents within the permissible scope of discovery even if blocked by Swiss law. Although Polymetrix's July Letter Request did not request specific relief, the Court interpreted the letter as a request to stay Polymetrix's compliance with the May 24, 2019 Order on the basis that Polymetrix, in the interest of complying with Swiss law Article 271 related to production of third-party confidential information, had a pending request with the Swiss government for authorization to produce said documents. The Court found that Polymetrix delayed making any argument under Article 271, and the application of Article 271 would not affect the outcome of the Court's balancing test as described in its May 24, 2019 Order.

Judge Bowbeer first discussed the procedural history of the case, illustrating Polymetrix's improper delay. In particular, she explained that Polymetrix previously relied only on Articles 162 and Article 273 of the Swiss Criminal Code. Polymetrix's July 2, 2019 Letter Request was the first time that Polymetrix raised any concern regarding Article 271, including the December 4, 2018 Supreme Court of Switzerland opinion Polymetrix argued supports a stay pending the Swiss government's approval. The Court distinguished the 2018 opinion because it related to a party's voluntary decision to produce potentially confidential information; the opinion did not relate to a party's obligation to comply with a U.S. court's order. Moreover, it was not until after the Court ordered Polymetrix to produce these documents that Polymetrix raised Article 271 or informed the Court that it was obligated to request permission from the Swiss government prior to the production of documents with potentially confidential third-party information.

Judge Bowbeer found that even without such delay, Polymetrix's additional reliance on Article 271 would not affect the outcome of the balancing test described in the Court's May 24, 2019 Order. The Court stated that Polymetrix still had not "ma[de] precise showings that there were national interests at stake," which weighed against the Court enforcing any Swiss blocking statutes. The Court supported this by citing to Polymetrix's Letter Request that stated: "it is generally accepted that a party to a dispute abroad may transmit its documents to defend itself in a civil dispute without violating [Article 271]."

In sum, Judge Bowbeer found there was "no justification for further delay," and denied Polymetrix's Letter Request to stay discovery in compliance with the Court's May 24, 2019 order.

[1] This summary completed by Fish and Richardson Twin Associate Brianna Chamberlin.

[2] The May 24, 2019 Order was summarized in Fish's May 2019 Minnesota Patent Litigation Wrap-Up blog available at:

Authors: Ann Motl, Brianna Chamberlin