Johns Hopkins University v. CellPro, Inc.
152 F.3d 1342 (1998)
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Rule of Law:
A district court's equitable power to grant an injunction under 35 U.S.C. § 283 is limited to preventing future infringement of a U.S. patent and cannot be used to reach lawful, non-infringing extraterritorial activities, even if those activities involve products originating from the same source as other products that were used to infringe within the U.S.
Facts:
- Dr. Civin of Johns Hopkins University (Hopkins) invented a method for purifying immature human stem cells using a specific monoclonal antibody (anti-My-10) that binds to an antigen (My-10) on those cells. Hopkins obtained patents on the purified cell suspension ('680 patent) and the antibody ('204 patent).
- Dr. Berenson developed a similar cell separation technology using a different antibody, designated 12.8.
- In 1989, Berenson and others formed CellPro, Inc. to commercialize this technology.
- In July 1990, prior to the issuance of Hopkins' '204 antibody patent, CellPro created a master cell bank consisting of 100 vials of the 12.8 hybridoma, the cell line that produces the antibody.
- After the '204 patent issued in October 1990, CellPro became aware of it.
- CellPro used some vials from its U.S. master cell bank for cloning and testing within the United States, which constituted infringing use of the patented invention.
- During the term of the '204 patent, CellPro exported six vials from the pre-issuance master cell bank to its Canadian business partner, Biomira.
- These six exported vials were never used, sold, or offered for sale in the United States. In Canada, they were used to produce antibodies for products to be sold exclusively outside the U.S.
Procedural Posture:
- Johns Hopkins University and its licensees (Hopkins) sued CellPro, Inc. in the U.S. District Court for the District of Delaware for patent infringement.
- CellPro counterclaimed for a declaratory judgment of invalidity and noninfringement of another Hopkins patent, which Hopkins then also asserted against CellPro.
- The case was tried before a jury, which returned a verdict in favor of CellPro, finding the asserted patents invalid and not infringed.
- Hopkins filed a post-trial motion for Judgment as a Matter of Law (JMOL) or, in the alternative, a new trial.
- The district court granted Hopkins' motion for JMOL on the issue of infringement for the '680 patent and later granted summary judgment of infringement for the '204 patent.
- The issues of damages and willful infringement were then tried to a second jury, which found CellPro's infringement was willful and assessed damages.
- The district court trebled the damages award based on the willfulness finding and issued a permanent injunction, which included an order compelling CellPro to repatriate and destroy products it had exported to Canada.
- CellPro, the appellant, appealed the district court's rulings on claim construction, infringement, damages, and the scope of the injunction to the U.S. Court of Appeals for the Federal Circuit, with Hopkins as the appellee.
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Issue:
Does a district court's equitable power under 35 U.S.C. § 283 extend to ordering the repatriation and destruction of non-infringing products located outside the United States, based on infringing use of similar products within the United States?
Opinions:
Majority - Lourie, J.
No. A district court abuses its discretion by ordering the repatriation and destruction of non-infringing products from a foreign country, as such an order exceeds the court's equitable power under 35 U.S.C. § 283. The court reasoned that an injunction's proper purpose is to prevent future infringement of a U.S. patent, not to punish past infringement or regulate lawful foreign activities. The six vials exported to Canada did not infringe the U.S. patent because they were made before the patent issued, never used or sold within the U.S., and their export and subsequent use abroad are not acts of infringement under 35 U.S.C. § 271(a). The court rejected the theory that the infringing use of other vials from the same U.S. cell bank could 'taint' the legally exported vials, stating they were not 'guilty by association.' Since the record showed the exported materials were for non-U.S. markets, the order did not serve to prevent future U.S. infringement and was therefore an improper, punitive application of injunctive relief.
Analysis:
This decision clarifies the territorial limits of a district court's injunctive power in patent law, reinforcing that 35 U.S.C. § 283 is a preventative tool, not a punitive one. It establishes a clear precedent that lawful, extraterritorial activities cannot be enjoined unless doing so is necessary to prevent future infringement within the United States. The ruling forces courts to maintain a strict distinction between the preventative purpose of injunctions (§ 283) and the compensatory/punitive role of damages (§ 284). This holding limits a patentee's ability to disrupt an infringer's legitimate foreign operations that are merely connected to domestic infringement, thereby protecting international commerce from the overreach of U.S. patent remedies.
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