Argued: November 14, 2017
E. Getchell, Esq. (orally), Troubh Heisler, Portland, for
appellant Puritan Medical Products Company LLC
P. Silk, Esq., Benjamin M. Leoni, Esq., and Rebecca G.
Klotzle, Esq. (orally), Curtis Thaxter LLC, Portland, for
appellee Copan Italia S.p.A.
SAUFLEY, C.J., and ALEXANDER, MEAD, GORMAN, JABAR, HJELM, and
Majority: SAUFLEY, C.J., and MEAD, GORMAN, JABAR, HJELM, and
Puritan Medical Products Company LLC appeals from a summary
judgment entered in the Business and Consumer Docket
[Mulhern, J.) in favor of Copan Italia S.P.A. on
Puritan's claim that Copan violated Maine's Actions
for Bad Faith Assertion of Patent Infringement statute, 14
M.R.S. §§8701-8702 (2017). Although the court
granted Copan's motion for summary judgment after finding
no genuine issues of material fact and determining that Copan
was entitled to judgment as a matter of law, Copan filed a
cross-appeal to preserve its separate argument that
Puritan's claim was preempted by federal patent law.
Because we conclude that Puritan's claim is preempted, we
affirm the grant of summary judgment in favor of Copan on
Puritan and Copan both produce flocked swabs that are sold
throughout the world. Copan has developed, produced, and
marketed flocked swabs since 2003 and currently holds patents
in both Europe and the United States. Headquartered in Italy,
Copan also maintains facilities in China and the United
States and employs 450 people. In 2015, Copan produced over
50 million flocked swabs.
Puritan also manufactures flocked swabs. Based in Guilford,
Maine, Puritan employs 250 people. In 2010, Puritan applied
for patents relating to flocked swabs and began producing,
marketing, and selling its flocked swabs in countries where
Copan holds patents.
In 2011, Copan became concerned that some of Puritan's
flocked swabs infringed its European and United States
patents. Copan alleged that it commissioned external and
performed internal examinations of Puritan's flocked
swabs to compare them to Copan's patents. Based on the
results of that testing, Copan sent a letter to Puritan's
distributor on June 8, 2011, communicating its belief that
Puritan's swabs infringed Copan's patents.
In 2012, Copan filed a claim against Puritan in Germany,
alleging infringement of its German utility models,
which evolve from its European patents. Through those
proceedings, Copan received additional information about the
composition of Puritan's flocked swabs from tests
performed by two court-appointed experts. Copan interpreted
the results of the tests to confirm that Puritan's
flocked swabs fall within the scope of protection afforded by
some of Copan's patents. Puritan denies that the
experts' findings confirmed infringement. Although
aspects of the German proceedings are still pending, Copan
won a utility model infringement case against Puritan in 2014
and, in 2015, one of its European patents and a utility model
were confirmed to be valid.
In the spring of 2015, Copan learned that Puritan's
flocked swabs may have been offered as part of a bid by a
distributer, GE Healthcare Life Sciences, to supply the
French Gendarmerie with forensic products. Copan sent letters
to GE Healthcare and the French Gendarmerie, explaining
that Puritan's flocked swabs may infringe upon
Copan's patents. The French Gendarmerie did not accept GE
In September 2015, Puritan filed a complaint in the Superior
Court in Piscataquis County against Copan pursuant to
Maine's Actions for Bad Faith Assertion of Patent
Infringement statute. See 14 M.R.S. §§
8701-8702. Shortly thereafter, the case was transferred to
the Business and Consumer Docket. Copan answered the
complaint and asserted affirmative defenses, including that
Puritan's claim was preempted by United States federal
patent law.After more than one year of discovery,
Copan moved for summary judgment, arguing that federal patent
law preempted Puritan's claim and, in the alternative,
that the record showed no genuine issue of material fact on
the merits and that it was entitled to summary judgment as a
matter of law.
The court granted Copan's motion for summary judgment. It
concluded (1) that it had jurisdiction to consider
Puritan's claim because it was not preempted by federal
patent law, and (2) that there were no genuine issues of
material fact and Copan was entitled to summary
Puritan filed an appeal from the summary judgment, and Copan
filed a cross-appeal, challenging the court's conclusion
that Puritan's claim was not preempted by federal law.
M.R. App. P. 2 (Tower 2016).
We review the entry of an order for summary judgment de novo
for errors of law, viewing the evidence in the light most
favorable to the party against whom summary judgment was
entered. See Diviney v. Univ. of Me. Sys., 2017 ME
56, ¶ 14, 158A.3d5.
Before we can reach Puritan's challenge to the trial
court's grant of summary judgment, we must first decide
whether federal patent law preempts Puritan's state law
claim. See James v. Inhabitants of the Town of West
Bath, 437 A.2d 863, 865 n.3 (Me. 1981) (explaining that
a court will decide whether a law or ordinance is preempted
before addressing the substantive argument). "Federal
preemption, which involves issues of statutory and
constitutional interpretation, is a question of law reviewed
de novo." In re Guardianship of Smith, 2011 ME
51, ¶ 10, 17 A.3d 136. If we conclude that Puritan's
state law claim is preempted, we will not address the
parties' substantive arguments on the merits of
Puritan's claim. See Doe v. Portland Hous.
Auth., 656 A.2d 1200, 1202 (Me. 1995); James,
437 A.2d at865n.3.
We begin by clarifying the legal standard for federal patent
law preemption and apply it to the facts presented in the
parties' statements of material facts and the supporting
evidentiary materials, with disputes resolved in
Puritan's favor. See Scott v. Androscoggin Cty.
Jail, 2004 ME 143, ¶¶2, 15, 866A.2d88.
Preemption and Federal Patent Law
The Supremacy Clause of the United States Constitution states
that the "Constitution, and the Laws of the United
States . . . shall be the supreme Law of the Land." U.S.
Const, art. VI, cl. 2. Federal preemption of state law takes
three forms: express preemption, field preemption, and
conflict preemption. See, e.g., English v. Gen. Elec.
Co., 496 U.S. 72, 78-79 (1990). Express preemption
occurs when Congress defines "explicitly the extent to
which its enactments pre-empt state law." Id.
at 78. Field preemption occurs when a state law attempts to
"regulate conduct in a field that Congress intended
the Federal Government to occupy exclusively."
Id. at 79. Finally, conflict preemption occurs
"where state law stands as an obstacle to the
accomplishment and execution of the full purposes and
objectives of Congress." Id. (quotation marks
The United States Court of Appeals for the Federal Circuit,
the federal court with jurisdiction over patent law appeals,
has determined that federal patent law neither fully occupies
the field nor expressly preempts state patent law. See
Ultra-Precision Mfg., Ltd. v. Ford Motor Co., 411 F.3d
1369, 1377 (Fed. Cir. 2005). Therefore, federal ...