Zachary Silbersher v. Dr. Falk Pharma Gmbh

• Court: Court of Appeals for the Ninth Circuit
• Decided: August 3, 2023
• Docket: 20-16256
• Status: Unpublished

Opinion

NOT FOR PUBLICATION FILED UNITED STATES COURT OF APPEALS AUG 3 2023 MOLLY C. DWYER, CLERK U.S. COURT OF APPEALS FOR THE NINTH CIRCUIT

ZACHARY SILBERSHER, Relator, No. 20-16256

Plaintiff-Appellee, D.C. No. 3:18-cv-01496-JD

and MEMORANDUM* UNITED STATES OF AMERICA, ex rel.; et al.,

Plaintiffs,

v.

VALEANT PHARMACEUTICALS INTERNATIONAL, INC.; et al.,

Defendants,

and

DR. FALK PHARMA GMBH,

Defendant-Appellant.

Appeal from the United States District Court for the Northern District of California James Donato, District Judge, Presiding

Argued and Submitted June 10, 2022 Portland, Oregon

* This disposition is not appropriate for publication and is not precedent except as provided by Ninth Circuit Rule 36-3. Before: SCHROEDER and SANCHEZ, Circuit Judges, and ANTOON,** District Judge.

Dr. Falk Pharma GmbH (“Falk”) cross-appeals the district court’s order

granting Falk’s motion to dismiss Zachary Silbersher’s complaint.1 Although the

court granted the motion on other grounds, Falk maintains that the district court

lacked personal jurisdiction over it and that this Court lacks jurisdiction to review

the parties’ cross-appeals because the case turns on questions of patent law

reserved for the Federal Circuit. Reviewing de novo, Go-Video, Inc. v. Akai Elec.

Co., 885 F.2d 1406, 1408 n.4 (9th Cir. 1989), we conclude that we have

jurisdiction to hear the parties’ cross-appeals, and we affirm the district court’s

assertion of personal jurisdiction over Falk.

1. Under 28 U.S.C. § 1295(a), the Federal Circuit has exclusive

jurisdiction over appeals from dismissals where “the plaintiff’s right to relief

necessarily depends on resolution of a substantial question of federal patent law, in

that patent law is a necessary element of one of the well-pleaded claims.”

Christianson v. Colt Indus. Operating Corp., 486 U.S. 800, 809 (1988) (emphasis

** The Honorable John Antoon II, United States District Judge for the Middle District of Florida, sitting by designation. 1 We address the parties’ cross-appeals concerning the public disclosure bar of the False Claims Act, 31 U.S.C § 3729, in a separately issued opinion.

2 added). Silbersher’s complaint alleges that Falk obtained certain patent claims by

making fraudulent misrepresentations in its patent applications. As the Federal

Circuit explains, “[t]here is nothing unique to patent law about allegations of false

statements.” Xitronix Corp. v. KLA-Tencor Corp., 882 F.3d 1075, 1077 (Fed. Cir.

2018). Moreover, “[p]atent claims will not be invalidated or revived based on the

result of this case,” id. at 1078, because the disputed patent claims were already

invalidated by the Federal Circuit, Dr. Falk Pharma GmbH v. GeneriCo, LLC, 774

F. App’x 665 (Fed. Cir. 2019), or have since expired. We conclude that 28 U.S.C.

§ 1295(a) does not bar our jurisdiction to review the district court’s order pursuant

to 28 U.S.C. § 1291.

2. We reject Falk’s argument that service of process was improper. A

defendant may waive a challenge to personal jurisdiction by submitting to the

jurisdiction of the court. See Ins. Corp. of Ir. v. Compagnie des Bauxites de

Guinee, 456 U.S. 694, 703–04 (1982). Although Falk initially challenged the

sufficiency of service, it later informed the district court that it did not “intend to

challenge [the district] court’s jurisdiction on the basis of improper service of

process.” Falk has therefore waived any such challenge.

3. The district court properly concluded that it had jurisdiction over Falk.

A court may exercise specific jurisdiction when “a defendant has followed a course

of conduct directed at the society or economy existing within the jurisdiction.”

3 J. McIntyre Mach., Ltd. v. Nicastro, 564 U.S. 873, 884 (2011). Such conduct

includes “purposeful[] avail[ment] . . . of” the jurisdiction’s laws. Id. at 880

(quoting Hanson v. Denckla, 357 U.S. 235, 253 (1958)). We assess Falk’s conduct

on a nationwide basis because 31 U.S.C. § 3732(a) authorizes nationwide service

of process. See Go-Video, 885 F.2d at 1416.

Falk purposefully availed itself of U.S. laws. Falk licensed its U.S. patents

for the drug Apriso for sale in the United States and sought to enforce those patents

in U.S. courts. After invoking its patents to protect Apriso, Falk allegedly

benefited from the sale of Apriso to the U.S. government, with Medicare alone

reimbursing an alleged $183 million during the relevant period. Requiring Falk to

answer Silbersher’s complaint therefore comports with fair play and substantial

justice. Nicastro, 564 U.S. at 883–84.

AFFIRMED.