United States: Minnesota Patent Litigation Wrap-Up – June And July 2019

Last Updated: August 23 2019
Article by Ann Motl and Brianna Chamberlin

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: https://www.fr.com/fish-litigation/minnesota-patent-litigation-wrap-up-may-2019. 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: https://www.fr.com/fish-litigation/minnesota-patent-litigation-wrap-up-may-2019.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Similar Articles
Relevancy Powered by MondaqAI
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions