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Novaseptum Ab, Novaseptic Ab, & Novaseptic v. Amesil. Inc.

December 29, 2010

NOVASEPTUM AB, NOVASEPTIC AB, & NOVASEPTIC
AMERICA, INC. PLAINTIFF,
v.
AMESIL. INC. DEFENDANT.



The opinion of the court was delivered by: Hon. Dennis M. Cavanaugh

NOT FOR PUBLICATION

OPINION

DENNIS M. CAVANAUGH, U.S.D.J.

This matter comes before the Court upon motion by NovaSeptum AB, NovAseptic AB, and NovAseptic America, Inc. (collectively "NovaSeptum") to substitute in their place Millipore AB and Millipore Corporation (collectively "Millipore") pursuant to Fed. R. Civ. P. 25. NovaSeptum also moves to reopen the case to enforce the Consent Order and for a finding of contempt against W.L. Gore & Associates ("Gore"). Oral argument was heard on December 21, 2010 at 9:00 a.m. After considering the submissions of all parties and the oral argument, it is the decision of this Court for the reasons herein expressed that NovaSeptum's motion to substitute Millipore is granted, and NovaSeptum's motion for contempt is denied.

I. Background*fn1 On February 28, 2007, this Court entered a Consent Order between Plaintiffs NovaSeptum AB, NovAseptic AB, and NovAseptic America, Inc. (collectively "NovaSeptum") and Defendant Amesil, Inc. ("Amesil"), and relating to NovaSeptum's Patent No. 6,779,575 ("575 Patent") for a "Sealing Appliance." The original action and Consent Order concern Claim 1 of the '575 Patent, which was owned by NovaSeptum. Of particular importance to the instant motion are Paragraphs 8, 9, and 12 of the Consent Order. Paragraph 8 provides, in relevant part, that "Amesil and its... successors-in-interest... are hereby permanently restrained and enjoined, for the life of the Patent-in-Suit, from making, having made, using, selling, offering to sell or importing... the ACP-9000 or the Re-designed Crimping Cutter,... or any substantially similar functional imitations of the 'jaw' components of the foregoing." Paragraph 9 provides, in relevant part, that the "Amesil 'anvil-type' crimper tool device... and any device that is substantially similar to the 'anvil-type' crimper, does not and will not constitute infringement of any claims of the '575 Patent or any reissue thereof." Paragraph 12 provides, in relevant part, "this Court retains jurisdiction over the parties for the purpose of enforcing the Agreement between the parties... and any action relating to the enforcement of this Order."

NovAseptic America, Inc. merged with Millipore Corporation on March 30, 2006, and Millipore Corporation was the surviving entity. NovAseptic AB and NovaSeptum AB were dissolved and merged into Millipore Arktiebolag ("Millipore AB") on December 29, 2006. Millipore Corporation and Millipore AB (collectively "Millipore") are the successors-in-interest to NovAseptic America, Inc., and NovAseptic AB and NovaSeptum, respectively. The merger occurred prior to entry of the Consent Order, but the Consent Order refers to NovaSeptum and there was no substitution of parties at that time. However, the initial Rule 7.1 disclosure filed with the original complaint states "1) NovaSeptum AB and NovAseptic America are subsidiaries of NovAseptic AB, and 2) Millipore (US) owns 100% of Millipore Investment Holdings Corporation (Dutch company), which owns 100% of the shares of NovAseptic AB." Plaintiff asserts that Millipore was involved in the settlement negotiations, and that reference to NovaSeptum and Millipore are interchangeable because they became the same entity due to the merger. On February 9, 2007, Millipore filed papers with the U.S. Patent and Trademark Office stating that NovaSeptum AB and NovAseptic AB had conveyed the '575 Patent to Millipore. The nature of the conveyance is listed as 'merger,' and the effective date is listed as December 29, 2006.

On February 28, 2007, the same day the Consent Order was entered, Gore publicly announced its acquisition of Amesil. Although Gore publicly referred to the transaction as an acquisition, the legal transaction was actually an asset purchase wherein Gore acquired certain assets, such as intellectual property, technology, and equipment from Amesil. The Asset Purchase Agreement was entered on February 2, 2007 and the closing date was February 28, 2007. The Asset Purchase Agreement provided that Amesil would retain any liabilities or obligations related to the settlement with NovaSeptum; Gore asserts that it did not acquire legal liabilities relating to the crimping tool litigation. The only crimping tool asset Gore purchased from Amesil was an 'anvil-type' crimping device, which Gore maintains was approved in Paragraph 9 of the Consent Order. NovaSeptum was apparently unaware of this asset purchase agreement prior to the Consent Order.

Several months after the asset purchase, Gore modified the crimping tool it purchased from Amesil. Gore's goal was to "preserve the two-step [crimping] process but incorporate the ability to perform both steps in a single device." Gore attached a cutting blade to a stainless steel lever, and then attached the lever to the 'anvil-type' crimping tool. Gore asserts that the modified device maintained the two-step process of the approved device with crimping and cutting occurring in two separate steps. The modified device was manufactured and sold under the product number ACS-9073. Gore now sells a similar device under product numbers GS00020 and GS00021.

A reissue of the '575 Patent was issued on March 30, 2010 as U.S. Reissue No. 41,169. Claim 1 of the reissued patent ("Patent-in-Suit") is in identical form to the original patent.

On April 2, 2010, Millipore provided Gore with a copy of the Consent Order along with a letter requesting Gore cease all sales of the Crimp and Cut Tools, remove the products from its website, provide an accounting of sales, and provide Millipore with a sample of the product. Gore provided Millipore with a sample of the Crimp and Cut Tools with product numbers ACS-9073 and GS00020. Gore informed Millipore it has sold both products, but currently only sells GS00020. Gore refused to cease sales or remove the products from its website. Millipore subsequently filed this motion to substitute Millipore for NovaSeptum, to reopen the case to enforce the consent judgment, and for contempt against Gore.

II. Discussion

A. Motion for Substitution

Fed. R. Civ. P. 25(c) provides: "If an interest is transferred, the action may be continued by or against the original party unless the court, on motion, orders the transferee to be substituted in the action or joined with the original party."

As discussed above, Millipore Corporation and NovAseptic America, Inc. merged, and Millipore Corporation is the surviving entity. NovaSeptum AB and NovAseptic AB dissolved, and merged into Millipore AB. Therefore, pursuant to Fed. R. Civ. P. 25 , Millipore Corporation and Millipore AB are hereby substituted for NovAseptic America, ...


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