Antitrust Law Daily Wrap Up, ANTITRUST—D. Del.: Thermal flexographic product developer loses first-to-file race, (Jul 6, 2015)

By Greg Hammond, J.D.

A developer of thermal digital flexographic printing plates and thermal flexographic processors could not remove an action from Delaware to Connecticut, where it had a similar action pending. The federal district court in Wilmington determined that the Delaware action was filed first and the defendant consented to jurisdiction by claiming it was an intended beneficiary of an anticompetitive agreement subject to Delaware law (E.I. du Pont de Nemours & Co. v. MacDermid Printing Solutions, LLC, July 2, 2015, Robinson, S.).

E.I. du Pont de Nemours & Co. (DuPont) and MacDermid Printing Solutions, LLC were both working on developing and offering thermal digital flexographic printing plates and thermal flexographic processors as a commercial product, between 2001 and 2002. Cortron Corp. agreed to manufacture MacDermid’s “LAVA” thermal flexographic processor, but DuPont filed suit, claiming the equipment Cortron manufactured infringed DuPont’s U.S. Patent No. 6,797,454 (the ‘454 patent). Cortron and DuPont reached a settlement agreement, however, in which Cortron agreed to cease manufacturing technology related to the thermal development of photopolymer plates without the express written consent of DuPont. In addition to dismissing the suit against Cortron, DuPont agreed to indemnify Cortron under certain circumstances under the agreement.

MacDermid subsequently filed suit against Cortron, claiming that Cortron’s agreement with DuPont was part of a conspiracy to violate antitrust laws. After a verdict was returned in MacDermid’s favor, DuPont filed suit against MacDermid in Delaware, under the belief that MacDermid would contend DuPont was responsible for the judgment against Cortron. MacDermid also filed suit, but in Connecticut, claiming that it is a third-party beneficiary of the agreement between Cortron and DuPont. MacDermid moved to dismiss, transfer, or stay the Delaware action.

The court denied the motion to dismiss, finding no sound basis to depart from the first-to-file rule. Further, MacDermid’s theory that it is an intended beneficiary of DuPont’s and Cortron’s agreement did not support its argument to dismiss, transfer, or stay because the agreement is governed by Delaware law and the parties to the agreement have agreed to the personal jurisdiction of the state or federal courts within Delaware.

The case number is 15-280-SLR.

Attorneys: Peter J. Walsh, Jr. (Potter Anderson & Corroon, LLP) for E.I du Pont de Nemours & Co. William J. Marsden, Jr. (Fish & Richardson, PC) for MacDermid Printing Solutions, LLC.

Companies: E.I. du Pont de Nemours & Co.; MacDermid Printing Solutions, LLC

Cases: Antitrust DelawareNews