Polyclad v. MacDermid

• Court: District Court, D. New Hampshire
• Decided: July 22, 1999
• Docket: CV-99-162-M
• Status: Published

Opinion

Polyclad v. MacDermid CV-99-162-M 07/22/99 UNITED STATES DISTRICT COURT

DISTRICT OF NEW HAMPSHIRE

Polvclad Laminates, Inc., and Fry Metals, Inc.; d/b/a PC Fab Division of Alpha Metals, Inc., Plaintiffs

v. Civil No. 99-162-M

MacDermid, Incorporated, Defendant

O R D E R

Federal patent law preemption in this case is limited — the

state tortious interference with existing and prospective

contractual relations claim is preempted only if "as applied"

that state law conflicts with federal patent law. Hunter

Douglas, Inc. v. Harmonic Design, Inc., 153 F.3d 1318, 1335 (Fed.

Cir. 1998). "Accordingly, in a case involving a patent holder's

conduct in obtaining or publicizing its patent, if the plaintiff

were to fail to allege that the defendant patent holder was

guilty of fraudulent conduct before the PTC or bad faith [in the

market place] in the publication of the patent, then the

complaint would be dismissed for failure to state a claim upon

which relief can be granted because of federal preemption."

Hunter, at 1336.

Here, defendant's second counterclaim fails to meet the

pleading reguirements described in Hunter as necessary to avoid

preemption. Defendant argues, in effect, that much should be

read into its choice of general pleading terms, but the second count cannot be stretched as far as defendant says. To remain

viable, the second counterclaim must fairly plead facts

supporting an articulated claim that the tortious interference at

issue included a patent-law predicate, e.g. that the patent

holder engaged in fraud before the PTO, or that the patent holder

engaged in bad faith in the marketplace in publicizing the patent

(e.g. they had no good faith belief that the patents were valid,

or enforceable, or were being infringed).

Because the second counterclaim cannot fairly be read to

include allegations necessary to avoid federal preemption,

plaintiff' motion to dismiss is hereby GRANTED, but without

prejudice to defendant filing a motion to add a new counterclaim

containing the reguisite allegations (if it can do so

consistently with the reguirements of Federal Rule of Civil

Procedure 11).

SO ORDERED.

Steven J. McAuliffe United States District Judge

July 22, 1999

cc: Michael Lenehan, Esg. Howard J. Susser, Esg. Daniel J. Gleason, Esg.