This is Not the Place (to Litigate Foreign Patent Infringement)

Voda v. Cordis Corporation, [05-1238](February 1, 2007)[GAJARSA, Newman, Prost] The Federal Circuit vacated and remanded the district court’s exercise of supplemental jurisdiction pursuant to 28 U.S.C. §1367 to hear foreign patent infringement claims.
SIGNIFICANCE: The U.S. in not the place to litigate foreign patent claims
BRIEF: LOF: Jurisdiction is a question of law that the Federal Circuit review de novo. Jurisdiction depends upon (1) whether 1367 authorizes supplement jurisdiction, and (2) whether such exercise is within the court’s discretion. The Federal Circuit found that supplemental jurisdiction appears to include foreign law claims, which raised the question of whether there was a common nucleus of fact. After a brief and inconclusive discussion, the Federal Circuit ducked the question, chosing instead to rely upon its finding that the district court abused its discretion under 1367(c). The Federal Circuit found that considerations of comity, judicial economy, convenience, fairness, and other exceptional circumstances constitute compelling reasons to decline jurisdiction under 1367(c). Among other things, the Federal Circuit considered the Paris Convention, which although not expressly stripping jurisdiction, mandates that patents of each country are independent. Likewise, the Federal Circuit noted, the PCT and WTO also maintain the independence of each countries patents. The Federal Circuit concluded that exercise of supplemental jurisdiction could undermine the U.S.’s obligations under these treaties. The Federal Circuit also concluded that comity considerations do not support the exercise of jurisdiction. Analogizing patent infringement to trespass, the Federal Circuit found that the territorial limits of the rights conferred by patents made it incongruous that the sovereign patent of one could be infringed or limited by another’s extension of jurisdiction. Finding that the spirit of cooperation could be undermined, and that considerations of comity were hindered, the Federal Circuit decided that “infringement claims should be left to the sovereigns that create the property rights in the first instance.” The Federal Circuit found a number of factors that compelled declining supplemental jurisdiction, and an absence of any analysis of those factors by the district court, accepting supplemental jurisdiction was an abuse of discretion.