IP Law Daily, PATENT—E.D. Mo.: Declaratory judgment case dismissed in favor of already-filed infringement suit, (Dec 15, 2021)

By Kevin M. Finson, J.D.

Personal jurisdiction did not exist over patent-holders in a declaratory judgment case because the only contact the patent holders had with the forum state was to sue a resident of the forum state in another state.

A Missouri-based eye health products manufacturer failed to establish that patent-holder Bausch & Lomb had minimum contacts in Missouri for personal jurisdiction purposes by filing a patent infringement suit against a Missouri resident in a New York court, the federal district court in St. Louis has held. The court also deferred to the first-filed infringement case instead of proceeding with a duplicative declaratory judgment action (ZeaVision LLC v. Bausch & Lomb Inc., December 14, 2021, Ross, J.).

A Missouri-based eye health products manufacturer ZeaVision, LLC sought declaratory judgment that its products did not infringe U.S. Patent Nos. 6,660,297 (the ’297 patent) and 8,603,522 (the ‘522 patent), which belonged jointly to Bausch & Lomb Incorporated and PF Consumer Healthcare 1, LLC (collectively, “Defendants”). The patents at issue concerned nutritional supplements that purported to treat macular degeneration. Defendants had previously filed suit against ZeaVision and others in the Western District of New York for infringement of the same patents. ZeaVision sought transfer of the New York action and simultaneously filed for declaratory judgment in the Eastern District of Missouri. Defendants moved to dismiss the Missouri action for lack of personal jurisdiction and the first-filed rule.

Personal jurisdiction. ZeaVision did not dispute that general personal jurisdiction did not exist over the Defendants. ZeaVision argued that specific personal jurisdiction because Defendants directed their patent enforcement activities at ZeaVision, which was a Missouri resident, by filing suit against ZeaVision in New York. The court held that filing suit against a Missouri resident could not constitute minimum contacts with Missouri and did not establish a prima facie case of specific personal jurisdiction.

First-filed. Defendants argued that the case should be dismissed under the first-filed rule because their New York action was filed nearly seven months earlier and concerned the same parties, patents, products, and legal and factual issues. ZeaVision argued that venue against in New York was not proper. The court held that the prudent course of action was to allow the New York court to determine whether it had proper venue, especially because personal jurisdiction did not exist over the Defendants in the present case.

Finding that there was not a prima facie case for personal jurisdiction, the court dismissed the case and denied ZeaVision’s request for jurisdictional discovery.

The Case is No: 4:21-cv-00072-JAR.

Attorneys: Anthony G. Simon (Simon Law Firm PC) and Jason C. Kravitz (Nixon Peabody LLP) for Zeavision, LLC. Dan H. Ball (Bryan Cave LLP) for Bausch & Lomb Inc. and PF Consumer Healthcare 1 LLC.

Companies: Zeavision, LLC; Bausch & Lomb Inc.; PF Consumer Healthcare 1 LLC

Cases: Patent MissouriNews GCNNews