Maine Court Sides with Patentee, Copan, in Bad Faith Claim

A state court in Maine has ruled in favour of medical swab manufacturer Copan Italia S.p.A. (“COPAN”) in an ongoing patent infringement dispute with Puritan Medical Products. The Maine Supreme Judicial Court upheld a summary judgement ruling in favour of COPAN on Puritan’s claim for “bad faith assertion of patent infringement”.

According to Maine state law, patentees may be liable under statute (14 M.R.S. § 8701) for bad faith assertion where they engage in conduct such as sending vague or unreasonable demand letters to others who use the ostensibly patented invention, offering to license the patented invention for an inflated fee, or threatening legal action without merit.

COPAN is a family-owned, Italian-based manufacturer of laboratory and biomedical products such as bacterial transport swabs, pipets, and the patented “flocked swabs” at issue in this litigation. The company produces over 50 million flocked swabs per year. Puritan also makes swabs and operates a manufacturing facility in Guildford, Maine.

Puritan brought its bad faith claim in 2015, asserting that COPAN had violated the statute by informing customers of its belief that Puritan was infringing various patents on COPAN’s flocked swab technology. In April 2017, the trial court granted summary judgment to COPAN, finding that the company did not act in bad faith according to the statute in asserting its patent infringement claims. Puritan appealed this decision. On September 10, 2018, the Maine Supreme Judicial Court upheld the lower court’s summary judgment disposition, and Puritan’s claim for bad faith was dismissed.

In a separate federal proceeding described by COPAN’s general counsel as the “real issue,” COPAN has filed a lawsuit against Puritan in a United States District Court for infringement of the flocked swab patents. COPAN commenced this claim in June 2018 and the proceedings are ongoing. If the court finds Puritan liable for patent infringement, the company may face penalties including damages.

This dispute highlights important issues surrounding the interaction of state and federal laws on intellectual property protection. In the United States, as in Canada, substantive intellectual property law is primarily a federal matter. In contrast, Maine state law creates a separate legal claim available to non-patentees to address bad faith assertion of patent infringement. Previously, COPAN had successfully argued that federal patent law trumped Maine’s state law on bad faith assertion of patent infringement, and the Supreme Judicial Court cited this as one of the reasons for dismissing Puritan’s bad faith claim on summary judgement.

Author: Wes Dutcher-Walls, 2018/2019 Articling Student-at-law