For the half-year to 31 December 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Rebecca Gulbul, Lucas Michels and Marie-Andrée Weiss.

Regular round-ups of the previous week's blogposts are kindly compiled by Alberto Bellan.

Tuesday, 6 February 2007

US Courts and Foreign Patents - Lost in Translation?

The IPKat has just found out that the Court of Appeals for the Federal Circuit has now handed down its opinion in Voda v Cordis (1st February 2007).

The issue before the court was whether or not a US District Court could exercise jurisdiction over a case involving the infringement of a foreign (non-US) patent (the court listed those patents: British, Canadian, European (sic), French and German patents) under the supplemental jurisdiction statute (28 USC §1367).

The court (split 2 : 1) held, more or less, that a US Federal Court cannot exercise jurisdiction over the infringement of a non-US patent using supplemental jurisdiction (it did not decide the issue under diversity jurisdiction).

It began by restating that the US Supreme Court has held that supplemental jurisdiction can be exercised only where the foreign claims are "so related to claims in the action within such original jurisdiction that they form part of the same case or controversy", which has led to a requirement that there is a "common nucleus of operative facts".

However, after setting this out and discussing it, the Court of Appeals decided not to rule whether there was a such a common nucleus of operative facts, but instead found that the District Court had improperly applied its discretion when it exercised supplemental jurisdiction over the claim.

It did this for a number of reasons.

  • The first (and probably the most intriguing) was that exercising such jurisdiction could undermine the obligations of the United States under certain international treaties (Paris, PCT and TRIPS);
  • Secondly, it said that the District Court should not have exercised jurisdiction because of comity and the principle of avoiding unnecessary interference with the authority of other states;
  • Thirdly, it suggested that exercising jurisdiction might not promote the efficient use of judicial resources;
  • Fourthly, that the cost of translations and getting foreign evidence may mean that factors of convenience weigh against exercising jurisdiction; and
  • Finally, it relied on the act of state doctrine.
The dissent of Judge Newman was robust. Her fundamental point was that patent law is not that different from other areas of law where the court has willingly accepted jurisdiction. She went on to point out that the majority got it wrong on all counts (more or less).

The IPKat has a lot of sympathy for Judge Newman's comments and expects that this case will be appealed or reheard en banc sometime soon.

(The IPKat, at right, in learned mode)

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