Zachary Silbersher v. Dr. Falk Pharma Gmbh ( 2023 )

NOT FOR PUBLICATION FILED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.
4