Puritan Medical Products Company LLC v. Copan Italia S.P.A.

MAINE SUPREME JUDICIAL COURT Reporter of Decisions

Decision: 2018 ME 90

Docket: BCD-17-180

Argued: November 14, 2017

Decided: July 3, 2018

Panel: SAUFLEY, C.J., and ALEXANDER, MEAD, GORMAN, JABAR, HJELM, and HUMPHREY, JJ.

Majority: SAUFLEY, C.J., and MEAD, GORMAN, JABAR, HJELM, and HUMPHREY, JJ.

Concurrence: ALEXANDER, J.

PURITAN MEDICAL PRODUCTS COMPANY LLC

v.

COPAN ITALIA S.P.A.

HUMPHREY, J.

[¶1] Puritan Medical Products Company LLC appeals from a summary

judgment entered in the Business and Consumer Docket (Mulhern, J.) in favor

of Copan Italia S.p.A. on Puritan’s claim that Copan violated Maine’s Actions

for Bad Faith Assertion of Patent Infringement statute, 14 M.R.S.

§§ 8701-8702 (2017). Although the court granted Copan’s motion for

summary judgment after finding no genuine issues of material fact and

determining that Copan was entitled to judgment as a matter of law, Copan

filed a cross-appeal to preserve its separate argument that Puritan’s claim was

preempted by federal patent law. Because we conclude that Puritan’s claim is

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preempted, we affirm the grant of summary judgment in favor of Copan on

other grounds.

I. BACKGROUND

[¶2] Puritan and Copan both produce flocked swabs1 that are sold

throughout the world. Copan has developed, produced, and marketed flocked

swabs since 2003 and currently holds patents in both Europe and the United

States. Headquartered in Italy, Copan also maintains facilities in China and the

United States and employs 450 people. In 2015, Copan produced over 50

million flocked swabs.

[¶3] Puritan also manufactures flocked swabs. Based in Guilford,

Maine, Puritan employs 250 people. In 2010, Puritan applied for patents

relating to flocked swabs and began producing, marketing, and selling its

flocked swabs in countries where Copan holds patents.

[¶4] In 2011, Copan became concerned that some of Puritan’s flocked

swabs infringed its European and United States patents. Copan alleged that it

1 A flocked swab is a device used for the collection of biological specimens. Contrary to the

concurrence’s characterization of these products as “glorified ‘Q-tips,’” the flocked swabs

manufactured by Copan and Puritan are used for the “collection of microbiological specimens for

the transport and preservation to the laboratory for use in the medical, forensic, and nonclinical

applications.” See Concurring Opinion ¶ 30. Indeed, Copan’s name stands for “COllection and

Preservation for ANalysis.” Q-tipsâ, or generic cotton swabs, on the other hand, are advertised as

“perfect for arts & crafts, manicures, makeup application, cleaning and more!” Q-TIPSâ Cotton

Swabs, Q-tips, http://www.qtips.com/products/qtips-cotton-swabs/ (last visited June 28, 2018).

3

commissioned external and performed internal examinations of Puritan’s

flocked swabs to compare them to Copan’s patents.2 Based on the results of

that testing, Copan sent a letter to Puritan’s distributor on June 8, 2011,

communicating its belief that Puritan’s swabs infringed Copan’s patents.

[¶5] In 2012, Copan filed a claim against Puritan in Germany, alleging

infringement of its German utility models,3 which evolve from its European

patents. Through those proceedings, Copan received additional information

about the composition of Puritan’s flocked swabs from tests performed by two

court-appointed experts. Copan interpreted the results of the tests to confirm

that Puritan’s flocked swabs fall within the scope of protection afforded by

some of Copan’s patents. Puritan denies that the experts’ findings confirmed

infringement. Although aspects of the German proceedings are still pending,

Copan won a utility model infringement case against Puritan in 2014 and, in

2015, one of its European patents and a utility model were confirmed to be

valid.

[¶6] In the spring of 2015, Copan learned that Puritan’s flocked swabs

may have been offered as part of a bid by a distributer, GE Healthcare Life

2 The parties dispute the existence and the findings of those examinations.

3 According to the record, a German utility model is an intellectual property right, similar to a

patent in some respects, but lasting only ten years, whereas a patent’s protection lasts twenty

years.

4

Sciences, to supply the French Gendarmerie with forensic products. Copan

sent letters to GE Healthcare4 and the French Gendarmerie, explaining that

Puritan’s flocked swabs may infringe upon Copan’s patents. The French

Gendarmerie did not accept GE Healthcare’s offer.

[¶7] In September 2015, Puritan filed a complaint in the Superior Court

in Piscataquis County against Copan pursuant to Maine’s Actions for Bad Faith

Assertion of Patent Infringement statute. See 14 M.R.S. §§ 8701-8702. Shortly

thereafter, the case was transferred to the Business and Consumer Docket.

Copan answered the complaint and asserted affirmative defenses, including

that Puritan’s claim was preempted by United States federal patent law.5

After more than one year of discovery, Copan moved for summary judgment,

arguing that federal patent law preempted Puritan’s claim and, in the

alternative, that the record showed no genuine issue of material fact on the

merits and that it was entitled to summary judgment as a matter of law.

[¶8] The court granted Copan’s motion for summary judgment. It

concluded (1) that it had jurisdiction to consider Puritan’s claim because it

4 Copan’s letter to GE Healthcare is the “demand letter” in this case. See 14 M.R.S. § 8701(1)(A)

(2017).

5 Copan’s original answer, filed in October 2015, did not include preemption as an affirmative

defense. The court granted Copan leave to amend its answer in December 2016, and Copan’s

amended answer included an “affirmative defense” of preemption.

5

was not preempted by federal patent law, and (2) that there were no genuine

issues of material fact and Copan was entitled to summary judgment.6

[¶9] Puritan filed an appeal from the summary judgment, and Copan

filed a cross-appeal, challenging the court’s conclusion that Puritan’s claim

was not preempted by federal law. M.R. App. P. 2 (Tower 2016).7

II. DISCUSSION

[¶10] We review the entry of an order for summary judgment de novo

for errors of law, viewing the evidence in the light most favorable to the party

against whom summary judgment was entered. See Diviney v. Univ. of Me. Sys.,

2017 ME 56, ¶ 14, 158 A.3d 5.

[¶11] Before we can reach Puritan’s challenge to the trial court’s grant

of summary judgment, we must first decide whether federal patent law

preempts Puritan’s state law claim. See James v. Inhabitants of the Town of

West Bath, 437 A.2d 863, 865 n.3 (Me. 1981) (explaining that a court will

decide whether a law or ordinance is preempted before addressing the

6 The concurrence’s assertion that this Court “elects to reach out [and] invoke the federal law of

preemption,” see Concurring Opinion ¶¶ 33, 35, 37, ignores the fact that the trial court also

analyzed the preemption issue, and did so before reaching the merits of Puritan’s state law claim,

thus understanding that preemption is a threshold issue. Preemption was an issue before the trial

court, and it was raised as an issue on appeal.

7 These appeals were commenced before September 1, 2017, and therefore the restyled Maine

Rules of Appellate Procedure do not apply. See M.R. App. P. 1.

6

substantive argument). “Federal preemption, which involves issues of

statutory and constitutional interpretation, is a question of law reviewed de

novo.” In re Guardianship of Smith, 2011 ME 51, ¶ 10, 17 A.3d 136. If we

conclude that Puritan’s state law claim is preempted, we will not address the

parties’ substantive arguments on the merits of Puritan’s claim. See

Doe v. Portland Hous. Auth., 656 A.2d 1200, 1202 (Me. 1995); James, 437 A.2d

at 865 n.3.

[¶12] We begin by clarifying the legal standard for federal patent law

preemption and apply it to the facts presented in the parties’ statements of

material facts and the supporting evidentiary materials, with disputes

resolved in Puritan’s favor. See Scott v. Androscoggin Cty. Jail, 2004 ME 143,

¶¶ 2, 15, 866 A.2d 88.

A. Preemption and Federal Patent Law

[¶13] The Supremacy Clause of the United States Constitution states

that the “Constitution, and the Laws of the United States . . . shall be the

supreme Law of the Land.” U.S. Const. art. VI, cl. 2. Federal preemption of

state law takes three forms: express preemption, field preemption, and

conflict preemption. See, e.g., English v. Gen. Elec. Co., 496 U.S. 72, 78-79

(1990). Express preemption occurs when Congress defines “explicitly the

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extent to which its enactments pre-empt state law.” Id. at 78. Field

preemption occurs when a state law attempts to “regulate[] conduct in a field

that Congress intended the Federal Government to occupy exclusively.” Id. at

79. Finally, conflict preemption occurs “where state law stands as an obstacle

to the accomplishment and execution of the full purposes and objectives of

Congress.”8 Id. (quotation marks omitted).

[¶14] The United States Court of Appeals for the Federal Circuit, the

federal court with jurisdiction over patent law appeals, has determined that

federal patent law neither fully occupies the field nor expressly preempts

state patent law. See Ultra-Precision Mfg., Ltd. v. Ford Motor Co., 411 F.3d

1369, 1377 (Fed. Cir. 2005). Therefore, federal patent law preempts state law

only when the state law directly conflicts with federal law. See id.

[¶15] At the heart of it, federal patent law protects a patent holder’s

good-faith assertion of patent infringement. See Globetrotter

Software, Inc. v. Elan Comput. Grp., Inc., 362 F.3d 1367, 1374 (Fed. Cir. 2004);

see also Virtue v. Creamery Package Mfg. Co., 227 U.S. 8, 37-38 (1913) (“Patents

would be of little value if infringers of them could not be notified of the

8 Conflict preemption can also occur “where it is impossible for a private party to comply with

both state and federal requirements.” See English v. Gen. Elec. Co., 496 U.S. 72, 79 (1990); see also

Bourgoin v. Twin Rivers Paper Co., 2018 ME 77, ¶ 10, --- A.3d ---.

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consequences of infringement or proceeded against in the courts.”); Aronson v.

Orlov, 116 N.E. 951, 955 (Mass. 1917) (“The owner of a patent already issued

may notify infringers and warn of his intent to protect his rights, if he acts in

good faith.”). A patent holder, “acting in good faith on its belief as to the

nature and scope of its rights, is fully permitted to press those rights even

though [it] may misconceive what those rights are.” Mikohn Gaming Corp. v.

Acres Gaming, Inc., 165 F.3d 891, 897 (Fed. Cir. 1998) (quotation marks

omitted).

[¶16] Relevant to the conflict preemption analysis, it is fundamental to

the federal patent law’s protection accorded to patent holders that state law

claims “against a patent holder . . . based on enforcing a patent in the

marketplace[] are ‘preempted’ by federal patent laws, unless the claimant can

show that the patent holder acted in ‘bad faith’ in the publication or

enforcement of its patent.” See 800 Adept, Inc. v. Murex Sec., Ltd., 539 F.3d

1354, 1369 (Fed. Cir. 2008); see also Globetrotter, 362 F.3d at 1374 (“We have

held that federal patent law preempts state-law tort liability for a

patentholder’s good faith conduct in communications asserting infringement

of its patent and warning about potential litigation.”); Mikohn Gaming, 165

F.3d at 894 (stating that “a notice of patent rights that is protected under

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federal law can not be held violative of state law on a different legal

standard”).9 In order for a state law claim “to avoid preemption, bad faith

must be alleged and ultimately proven, even if bad faith is not otherwise an

element of the [state law] claim.” Globetrotter, 362 F.3d at 1374 (quotation

marks omitted). In other words, “federal patent laws . . . bar state-law liability

for communications concerning alleged infringement so long as those

communications are not made in ‘bad faith.’” Id. at 1374-75.

[¶17] Because “[b]ad faith includes separate objective and subjective

components,” Dominant Semiconductors Sdn. Bhd. v. OSRAM GmbH, 524 F.3d

1254, 1260 (Fed. Cir. 2008), determining whether a patent holder acted in

bad faith involves a two-step inquiry. First, to survive a motion for summary

judgment, the plaintiff must present evidence that the patent holder’s

allegations of patent infringement were “objectively baseless,” meaning that

9 Other state courts have acknowledged this conflict preemption in patent law. See, e.g., Xitronix

Corp. v. KLA-Tencor Corp., No. O3-12-00206-CV, 2014 Tex. App. LEXIS 8592, at *6 (Tex. App. Aug. 7,

2014) (“Federal patent law generally preempts state-law tort liability, including claims for tortious

interference and unfair competition, essentially immunizing a patentee from liability when it in

good faith publicizes allegations of infringement of its patent.”); Step Saver, Inc. v. Glacier Salt, Inc.,

A04-1805, 2005 Minn. App. LEXIS 656, at *8 (Minn. Ct. App. June 14, 2005) (explaining that “if a

plaintiff bases an action on conduct that is protected or governed by federal patent law, then the

plaintiff may not invoke the state law remedy, which must be preempted for conflict with the

federal patent law”).

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“no reasonable litigant could realistically expect success on the merits.”10 See

GP Indus. v. Eran Indus., 500 F.3d 1369, 1374 (Fed. Cir. 2007) (quotation

marks omitted). Second, in the context of summary judgment, if the plaintiff

presents evidence that the patent holder’s allegations were objectively

baseless, it then must also present evidence that the patent holder acted in

subjective bad faith. See 800 Adept, 539 F.3d at 1370.

[¶18] In sum, federal patent law protects good faith assertions of patent

infringement, and there exists “a presumption that the assertion of a duly

granted patent is made in good faith.” See Golan v. Pingel Enter., 310 F.3d

1360, 1371 (Fed. Cir. 2002) (quotation marks omitted). Any state law claim

that conflicts with the federal law’s protection of good faith assertions of

patent infringement would be preempted. See Globetrotter, 362 F.3d at 1374.

Only when a party alleging a state law claim demonstrates that the assertion

of patent infringement was objectively baseless and made in subjective bad

faith will the claim escape preemption and be able to be considered on the

merits of the state law cause of action.

10 The objectively baseless standard applies “outside the context of actual litigation” to

“state-law claims based on communications alleging patent infringement.” Globetrotter Software,

Inc. v. Elan Comput. Grp., Inc., 362 F.3d 1367, 1376-77 (Fed. Cir. 2004).

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B. Maine’s Law

[¶19] In 2014, Maine’s Legislature enacted 14 M.R.S. §§ 8701-8702,

entitled Actions for Bad Faith Assertion of Patent Infringement. See P.L. 2013,

ch. 543 (effective Aug. 1, 2014). In doing so, Maine joined a growing number

of states that have passed similar laws in an attempt to address the problems

presented by patent trolls11 and bad faith assertions of patent infringement.

See An Act Regarding Bad Faith Assertions of Patent Infringement: Hearing on

L.D. 1660 Before the J. Standing Comm. on the Judiciary, 126th Legis. (2014)

(testimony of John D. Delahanty, Esq.); Paul R. Gugliuzza, Patent Trolls and

Preemption, 101 Va. L. Rev. 1579, 1593 (2015).

[¶20] The Maine statute prohibits a person from making “a bad faith

assertion of patent infringement against another person.” 14 M.R.S.

§ 8701(2). The statute does not define the phrase “bad faith assertion” but

lists factors a court may consider to determine whether a defendant has made

a bad faith assertion, including certain deficiencies in the demand letter; a

demand for payment of a fee within an unreasonably short period of time;

actual or constructive knowledge by the patent holder that the assertion of

11 Patent trolls are companies, typically that do not produce any product or provide any service,

that purchase patents for the sole purpose of suing other companies for patent infringement. See

An Act Regarding Bad Faith Assertions of Patent Infringement: Hearing on L.D. 1660 Before the

J. Standing Comm. on the Judiciary, 126th Legis. (2014) (testimony of Sen. Anne Haskell).

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patent infringement was meritless; and the deceptive nature of the assertion.

14 M.R.S. § 8701(3)(A). The statute also lists factors that a court may consider

as evidence that a defendant did not make a bad faith assertion: the demand

letter was not deficient; the defendant made a good faith effort to establish

that the plaintiff infringed the patent; the defendant made a substantial

investment in the use of the patent or in the production or sale of a product or

item covered by the patent; and the defendant demonstrated good faith

business practices in previous efforts to enforce the patent or a substantially

similar patent. 14 M.R.S. § 8701(3)(B).

[¶21] With this understanding of the state law, our task is to determine

whether its application in this case is in conflict with federal patent law.

C. Federal Preemption of Claims Alleged Pursuant to 14 M.R.S. § 8701

[¶22] Maine’s statute does not require a plaintiff to prove that the

patent holder’s allegation of patent infringement was objectively baseless or

made in subjective bad faith pursuant to the federal “bad faith” standard. See

800 Adept, 539 F.3d at 1370; see also 14 M.R.S. § 8701. Although one of the

factors a court may consider as indicative of bad faith under the Maine statute

is similar to the federal standard—that “[t]he person knew or should have

known that the assertion of patent infringement is meritless”—it is not a

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required element of a “bad faith assertion” pursuant to the Maine statute. See

14 M.R.S. § 8701(3)(A)(6). Certainly, there will be cases where a plaintiff

satisfies the two-part test in order to avoid federal preemption in a claim

alleged pursuant to Maine’s statute, but there will also be instances where a

plaintiff utilizing Maine’s statute will not meet its burden. However, “a state

law is not per se preempted unless every fact situation that would satisfy the

state law is in conflict with federal law.”12 Hunter Douglas, Inc. v. Harmonic

Design, Inc., 153 F.3d 1318, 1335 (Fed. Cir. 1998) (citing Cal. Coastal

Comm’n v. Granite Rock Co., 480 U.S. 572, 580 (1987)), overruled on other

grounds by Midwest Indus., Inc. v. Karavan Trailers, Inc., 175 F.3d 1356 (Fed.

Cir. 1999). Therefore, “[e]xactly what constitutes bad faith remains to be

determined on a case by case basis.” Zenith Elecs. Corp. v. Exzec, Inc., 182 F.3d

1340, 1354 (Fed. Cir. 1999). The Federal Circuit has described the analysis for

conflict preemption in the patent law arena as an “as-applied” approach. See

Hunter Douglas, 153 F.3d at 1335.

12 Courts regularly employ a case-by-case analysis in issues of conflict preemption. See, e.g., Cal.

Coastal Comm’n v. Granite Rock Co., 480 U.S. 572, 580-81, 593-94 (1987) (holding that the specific

application of a state regulation did not conflict with federal law but explaining that other

applications of the same regulation might subject such application to conflict preemption);

Allis-Chalmers Corp. v. Lueck, 471 U.S. 202, 220 (1985) (explaining in its interpretation of the federal

Labor Management Relations Act that “[t]he full scope of the pre-emptive effect of federal

labor-contract law remains to be fleshed out on a case-by-case basis”).

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[¶23] “To survive summary judgment, [Puritan] must present

affirmative evidence sufficient for a reasonable jury to conclude” that the

patent holder’s assertion was objectively baseless and made in subjective bad

faith in order to overcome the “presumption that the assertion of a duly

granted patent is made in good faith.” See Golan, 310 F.3d at 1371 (quotation

marks omitted). “[T]he bad faith standard . . . cannot be satisfied in the

absence of a showing that the claims asserted were objectively baseless.”

Dominant Semiconductors, 524 F.3d at 1260. Accordingly, in determining

whether Puritan’s specific state law claim is preempted by federal patent law,

our first inquiry is whether Copan’s assertions of potential patent

infringement in its demand letter were objectively baseless. See Globetrotter,

362 F.3d at 1377; see also 800 Adept, 539 F.3d at 1370 (“Absent a showing

that the infringement allegations are objectively baseless, it is unnecessary to

reach the question of the patentee’s intent.”).

1. Objectively Baseless

[¶24] To satisfy the objectively baseless prong at the summary

judgment stage, Puritan would have to present sufficient evidence that, in

light of the clear and convincing standard that would adhere at a trial, would

allow a fact-finder to determine that Copan was incorrect or false in its

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assertion of its patent. See Globetrotter, 362 F.3d at 1377; Golan, 310 F.3d at

1371; Mikohn Gaming, 165 F.3d at 897 (“In general, a threshold showing of

incorrectness or falsity, or disregard for either, is required in order to find bad

faith in the communication of information about the existence or pendency of

patent rights.”). “[B]ad faith is not supported when the information is

objectively accurate.” See Dominant Semiconductors, 524 F.3d at 1261

(quotation marks omitted).

[¶25] Based on facts not in dispute, Puritan failed to meet its burden.

See Contech Stormwater Solutions, Inc. v. Baysaver Techs., Inc., 534 F. Supp. 2d

616, 632 (D. Md. 2008), aff’d 310 Fed. Appx. 404 (Fed. Cir. 2009). Although

Puritan challenged Copan’s belief that Puritan infringed Copan’s patents,

Puritan failed to pinpoint any incorrect statement or falsity in the demand

letter. See Mikohn Gaming, 165 F.3d at 897; see also Dominant Semiconductors,

524 F.3d at 1264 (explaining that the plaintiff “produced no evidence of

objective baselessness at all—in other words, it produced no evidence that the

[patent holder’s] claims of infringement were factually unsound”). Even

viewing the evidence in the light most favorable to Puritan, see Diviney, 2017

ME 56, ¶ 14, 158 A.3d 5, it has failed to present sufficient evidence13 that

13 Related to the objectively baseless prong, Puritan argued that its expert witness’s deposition

testimony that Copan had no reasonable basis for the assertions in its demand letter is evidence of

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might allow a fact-finder to determine that Copan’s assertion of patent

infringement was objectively baseless. See Dominant Semiconductors, 524

F.3d at 1263-64.

2. Subjective Bad Faith

[¶26] Puritan argues that several circumstances support its claim that

Copan’s assertion was made in bad faith: (1) Copan’s failure to produce a

report of an examination comparing Puritan’s swabs to Copan’s patent; (2)

Copan’s failure to initiate patent infringement litigation against Puritan after

sending its demand letter;14 (3) Copan’s reference to expired German utility

models in its demand letter; and (4) the timing of Copan’s demand letter,

which was sent close in time to the French Gendarmerie’s deadline for bids.

Although these circumstances “might be probative of subjective

baselessness . . . they do not help to show that a jury reasonably could find

that [Puritan] could meet its burden of proving by clear and convincing

bad faith. However, Copan’s expert testified to the opposite. “The mere fact that [Puritan’s]

position is reasonable . . . does not equate to a finding that [Copan’s] position is objectively

baseless.” See GED Integrated Solutions, Inc. v. Durotech Int’l, Inc., No. 5:06CV1327, 2008 U.S Dist.

LEXIS 35009, at *9 (N.D. Ohio Apr. 29, 2008) (considering a motion for summary judgment on a

state law claim relating to the assertion of patent infringement). Furthermore, although “these two

experts disagree about the existence of infringement, such disagreement does not create an issue of

fact.” See id.

14 During the pendency of this appeal, Copan filed a lawsuit against Puritan in the United States

District Court for the District of Maine, alleging patent infringement and false advertising in

violation of federal and state laws. See Copan Italia, S.p.A. v. Puritan Medical Products Company LLC,

No. 1-18-cv-00218-JDL (D. Me. filed June 1, 2018). That pending lawsuit does not affect this case.

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evidence that [Copan’s] infringement allegations were objectively baseless.”

See Dominant Semiconductors, 524 F.3d at 1263-64. “Subjective

considerations of bad faith are irrelevant if the assertions are not objectively

baseless.” GP Indus., 500 F.3d at 1375. Because we conclude that Copan’s

assertion of patent infringement was not objectively baseless, we do not reach

the second part of the analysis, and therefore Puritan’s state law claim fails to

avoid federal preemption.

[¶27] Our determination that federal patent law preempts Puritan’s

claim in this case does not mean that Maine’s statute is preempted as a

whole.15 See Hunter Douglas, 153 F.3d at 1335 (citing Cal. Coastal Comm’n,

480 U.S. at 580-81). A claim alleged pursuant to 14 M.R.S. § 8701 can survive

federal preemption if the plaintiff presents sufficient evidence to allow a

15 Contrary to the concurrence’s assertion, we are not implying that 14 M.R.S. § 8701 (2017) is

unconstitutional. See Concurring Opinion ¶ 37. Rather, we state only that Puritan’s specific claim is

preempted. See Boydstun Equip. Mfg., LLC v. Cottrell, Inc., No. 3:16-cv-790-SI, 2017 U.S. Dist. LEXIS

175659, at *50 (D. Or. Oct. 24, 2017) (explaining that “[the plaintiff’s] claim under [Oregon’s ‘Patent

infringement claim made in bad faith’ statute] is preempted by federal law” after conducting an

analysis pursuant to Globetrotter, 362 F.3d at 1374-77). Furthermore, the doctrine of constitutional

avoidance is inapplicable here. See Concurring Opinion ¶ 36. Courts are divided on whether the

doctrine applies to questions of federal preemption, but even the courts that hold that it does apply

explain that the preemption issue should be avoided if there are “alternative independent state law

grounds for disposing of a case.” See Columbia Venture, LLC v. Dewberry & Davis, LLC, 604 F.3d 824,

828-29 (4th Cir. 2010) (ultimately reaching the preemption issue after determining that the only

independent state law ground that could dispose of the entire case—the violation of the statute of

limitations—failed); but see Colo. Dep’t of Pub. Health & Env’t v. United States, 693 F.3d 1214, 1222

(10th Cir. 2012); N.J. Payphone Ass’n v. Town of West New York, 299 F.3d 235, 239 n.2 (3d Cir. 2002).

Because there are no alternative, independent grounds to dispose of this case, we cannot avoid

addressing the preemption issue.

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fact-finder to determine that the defendant’s assertions of patent

infringement were both objectively baseless and made in subjective bad faith.

See Globetrotter, 362 F.3d at 1374; see also 800 Adept, 539 F.3d at 1370.

III. CONCLUSION

[¶28] The trial court did not have the benefit of the precedent we now

establish and granted summary judgment in favor of Copan on the merits of

Puritan’s state law claim after concluding that it was not preempted by federal

patent law. In its preemption analysis, the court conflated the test for federal

preemption with the test for federal jurisdiction.16 Because we hold that

federal patent law preempts Puritan’s state law claim, we affirm the grant of

summary judgment in favor of Copan on that basis. See Bakal v. Weare, 583

A.2d 1028, 1030 (Me. 1990) (explaining that “even though the basis for the

court’s entry of summary judgment for [defendant] was erroneous, we affirm

16 The trial court’s analysis focused on whether a state court had jurisdiction to consider the

state law claim of bad faith assertion of patent infringement. The trial court stated that “[f]ederal

district courts have exclusive original jurisdiction over ‘all civil actions arising under the

Constitution, laws, or treaties of the United States.’” (Quoting 28 U.S.C.S. § 1331 (LEXIS through

Pub. L. No. 115-193)). It explained that although patent law has typically been a creature of federal

law, “[n]o element of the claim or element delineated by statute requires the [c]ourt to determine a

question of federal patent law.” It therefore concluded that the claim was not preempted and that it

had jurisdiction to consider the claim. However, the court’s analysis neglected to consider the

proper test for preemption of this type of claim: whether the state law claim in this case conflicts

with federal patent law’s protection of good faith assertions of patent infringement. See

Globetrotter, 362 F.3d at 1374; see also Boydstun Equip. Mfg., 2017 U.S. Dist. LEXIS 175659, at *49.

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the judgment because there exists another reason why [defendant] is entitled

to judgment as a matter of law.”).

The entry is:

Judgment affirmed.

ALEXANDER, J., concurring.

[¶29] Title 14 M.R.S. § 8701 (2017) provides critical protection for

Maine businesses and jobs from abusive, bad faith claims of patent

infringement. The protection offered by section 8701 is particularly

important to discourage bad faith claims related to the manufacture of health

care products and devices. In this field, patent litigation is used to attempt to

create monopolies on particular products that some exploit to charge

exorbitant prices and reap huge profits from the sale of drugs and other

products that cost little to manufacture—escalating the already high cost of

health care to the detriment of the public health and welfare.

[¶30] The dispute here involves absorbent swabs, absorbent material

on the head of a thin stick, commonly available and applied to a variety of uses

in forensic medicine, personal care, and health care. From the depictions in

the record, the products at issue are, in reality, glorified “Q-tips.” The parties

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are disputing whether the manner of attaching the absorbent material to the

head of the stick by inserting strands of the material into the head of the stick

is subject to a patent giving Copan Italia a monopoly on swabs with absorbent

material attached in that manner.

[¶31] The Court’s opinion aptly summarizes the purposes and

importance of Maine’s product protection law.

In 2014, Maine’s Legislature enacted 14 M.R.S.

§§ 8701-8702, entitled Actions for Bad Faith Assertion of Patent

Infringement. See P.L. 2013, ch. 543 (effective Aug. 1, 2014). In

doing so, Maine joined a growing number of states that have

passed similar laws in an attempt to address the problems

presented by patent trolls17 and bad faith assertions of patent

infringement. See An Act Regarding Bad Faith Assertions of Patent

Infringement: Hearing on L.D. 1660 Before the J. Standing Comm. on

the Judiciary, 126th Legis. (2014) (testimony of John D. Delahanty,

Esq.); Paul R. Gugliuzza, Patent Trolls and Preemption, 101 Va. L.

Rev. 1579, 1593 (2015).

Court’s Opinion ¶ 19.

[¶32] Recognizing the importance of the protections provided to Maine

businesses and jobs by this law, the trial court carefully and critically

reviewed the material facts presented to it by the parties. After review, the

court concluded that Puritan Medical Products Company LLC had failed to

establish any dispute as to material fact that Copan Italia’s assertions of patent

17 Patent trolls are described in the Court’s footnote 11.

21

infringement were made in bad faith. Because Puritan had not established the

element of bad faith required for a section 8701 claim, the trial court granted

Copan’s motion for summary judgment. Because the trial court properly

evaluated the materials before it and granted summary judgment, we should

affirm that grant of summary judgment.

[¶33] Instead of affirming the trial court’s grant of summary judgment,

the Court elects to reach out, invoke the federal law of preemption, and hold

that, considering the materials before it, the trial court erred in even reaching

the merits of the section 8701 bad faith claim. The Court holds, in effect, that

the section 8701 claim in this case, and, by implication, most section 8701

claims, are preempted by federal patent law.

[¶34] The federal law of preemption presents a question of the

constitutionality of application of state law, here section 8701, as preempted

by the Supremacy Clause, art. VI, cl. 2, of the United States Constitution. The

Court states: “The Supremacy Clause of the United States Constitution states

that the ‘Constitution, and the Laws of the United States . . . shall be the

supreme Law of the Land.’ U.S. Const. art. VI, cl. 2. Federal preemption of

state law takes three forms: express preemption, field preemption, and

22

conflict preemption.” Court’s Opinion ¶ 13 (citing English v. Gen. Elec. Co., 496

U.S. 72, 78-79 (1990)).

[¶35] The Court’s approach puts the cart before the horse, reaching out

to address preemption before addressing the merits of the trial court’s ruling

in favor of Copan. Had the trial court found that Puritan had established a

dispute as to material fact regarding the bad faith issue under the Maine law,

the trial court would then have had to address the issue of federal preemption

before it proceeded to address the merits of the bad faith claim. Some

preemption opinions cited by the Court at paragraphs 14-15 appear to require

just such an analysis of the validity of the bad faith claim before deciding the

preemption issue. See Ultra-Precision Mfg., Ltd. v. Ford Motor Co.,

411 F.3d 1369, 1377 (Fed. Cir. 2005); Globetrotter Software, Inc. v. Elan

Comput. Grp., 362 F.3d 1367, 1374 (Fed. Cir. 2004).

[¶36] Federal precedent establishes that the constitutional preemption

issue should be reached only when there is no alternative, independent

grounds to dispose of this case. See Columbia Venture, LLC v. Dewberry &

Davis, LLC, 604 F.3d 824, 828 (4th Cir. 2010) (noting that a court should

decide a case on an independent state-law basis if that basis allows the court

to avoid deciding a constitutional question such as preemption). But see

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Colorado Dep’t of Pub. Health & Environment v. United States, 693 F.3d 1214,

1222 (10th Cir. 2012) (citing Douglas v. Seacoast Prods., Inc., 431 U.S. 265, 272

(1977) (stating that federal preemption of state law is grounded in the

Supremacy Clause of the United States Constitution, but the Supreme Court

has treated preemption “as ‘statutory’ for purposes of [the Court’s] practice of

deciding statutory claims first to avoid unnecessary constitutional

adjudications.”)). The trial court’s ruling in favor of Copan provides the

independent grounds to avoid the preemption issue.

[¶37] Having granted Copan’s motion for summary judgment, the trial

court was not required to consider whether the Supremacy Clause applied to

preempt the section 8701 action. We should not be suggesting otherwise.

Reaching the preemption issue before analyzing the merits of the trial court’s

judgment implies that the important business protection adopted in the bad

faith assertion of patent infringement law, section 8701, is unconstitutional

because it is preempted. While the Court, in footnote 15, suggests that a

section 8701 claim may not always be preempted, the standards the Court

sets to reach the merits of any State claim appear virtually unattainable.

[¶38] Our review of a claim that a statute, such as section 8701, is

unconstitutional must begin with a presumption that the law is constitutional.

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Godbout v. WLB Holding, Inc., 2010 ME 46, ¶ 5, 997 A.2d 92. Respecting this

deferential consideration of statutes that the Legislature has deemed it

important to enact, we have said that when an appeal presents a

constitutional challenge to a statute—and a Supremacy Clause preemption

claim is a constitutional challenge—we will avoid addressing the

constitutional issue if the appeal can be decided by addressing issues that do

not implicate a constitutional violation. Bates v. Dep’t of Behavioral &

Developmental Servs., 2004 ME 154, ¶ 85, 863 A.2d 890; Hannum v. Board of

Environmental Protection, 2003 ME 123, ¶ 18, 832 A.2d 765.

[¶39] Because the trial court rejected Puritan’s claim by its grant of

Copan’s motion for summary judgment, we should avoid addressing the

constitutional preemption issue by affirming that grant of summary judgment.

We should not issue an opinion undermining the validity of the important

protection for Maine businesses and jobs provided by section 8701.

[¶40] I would affirm the trial court’s decision granting Copan’s motion

for summary judgment without addressing the preemption issue.

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Thomas E. Getchell, Esq. (orally), Troubh Heisler, Portland, for appellant Puritan

Medical Products Company LLC

David P. Silk, Esq., Benjamin M. Leoni, Esq., and Rebecca G. Klotzle, Esq.

(orally), Curtis Thaxter LLC, Portland, for appellee Copan Italia S.p.A.

Business and Consumer Docket docket number CV-2015-64

FOR CLERK REFERENCE ONLY