Filewrapper® | A patent, trademark, and copyright law blog by MVS - Subject matter jurisdiction

MVS Filewrapper® Blog: U.S. Supreme Court Addresses Jurisdiction In Patent Related Case

Thu, 21 Feb 2013 08:54:00-0500

In an unanimous decision in Gunn v. Minton, the United States Supreme Court clarified: (1) 28 U.S.C. § 1338(a) does not necessarily deprive state courts of subject matter jurisdiction for cases dealing with patent law, such as a legal malpractice claim asserted against an attorney representing someone in patent litigation; and (2) a state-based malpractice claim asserted a patent attorney does not necessarily evoke federal subject matter jurisdiction.

Gunn represented Minton in a patent infringement suit. During that suit Minton’s patent was held invalid as violating the “on sale” bar in 35 U.S.C. § 102(b) for leasing the subject matter of the patent more than one year prior to the date of the patent application. Minton argued, in a motion for reconsideration, that the lease was part of testing and fit within the experimental use exception to the on sale bar. The district court denied the motion and the Court of Appeals for the Federal Circuit affirmed the district court’s ruling. Subsequently, Minton sued his attorneys for legal malpractice claiming that they failed to timely raise the experimental use argument, which resulted in the improper invalidation of his patent and loss of the patent infringement lawsuit. This malpractice lawsuit was brought in Texas state court. The attorneys that represented Minton in the patent infringement suit argued that regardless of the timing of the experimental use argument, it would have failed. The Texas trial court agreed. Minton appealed the ruling to the Texas Supreme Court. On appeal Minton argued that the Texas court did not have proper subject matter jurisdiction because this claim properly fits under federal question jurisdiction pursuant to 28 U.S.C. § 1338(a), which provides exclusive federal jurisdiction thereby depriving state courts of jurisdiction. The Texas Supreme Court ruled in favor of Minton’s argument and Gunn appealed the holding to the United States Supreme Court.

The United States Supreme Court held that § 1338(a) does not deprive state courts of subject matter jurisdiction over the malpractice claim because federal law did not create the cause of action. Section 1338(a) only deprives state court jurisdiction where the cause of action is created by federal law. Specifically, § 1338(a) states, “No state Court shall have jurisdiction over any claim for relief arising under any Act of Congress relating to patents . . . .” This cause of action, however, does not arise under the Patent Act; rather it is a state legal malpractice claim based on previous litigation arising under the Patent Act. To determine whether federal jurisdiction would be proper at all the United States Supreme Court relied on its precedent Grable & Sons Metal and Prods., Inc. v. Darue Eng’g & Mfg. to determine whether a federal issue is actually disputed. Grable provides four prongs that must each be met for federal jurisdiction to be proper over a state law claim. The federal issue must be: (1) necessarily raised, (2) actually disputed, (3) substantial, and (4) capable of resolution in federal court without disrupting the federal-state balance approved by Congress. Slip. op. at p. 6 (citing Grable, 545 U.S. 308, 314 (2005)). The Supreme Court held that Minton met the first two prongs, but failed on the third and fourth. The Supreme Court’s analysis of the third prong determined that it did not matter how the state court handled the hypothetical questions related to the timing of the experimental use argument because either way it would not change the result of the actual patent litigation. With respect to the fourth prong, the Court held that permitting state courts to engage in “a hypothetical patent issue” for the purpose of resolving a state legal malpractice claim does not disrupt the balance between state and federal responsibilities. Id. at p. 12. Moreover, the Court noted that states “have ‘a special responsibility for maintaining standards among members of the licensed professions.’” Id. (quotation omitted). The Court's conclusion was that no federal subject matter jurisdiction existed under 28 U.S.C. § 1338(a) and that state jurisdiction would be proper to handle this claim. Therefore, the Texas Supreme Court's ruling was reversed.

MVS Filewrapper® Blog: Federal Circuit Addresses Subject Matter Jurisdiction in Patent-Related Cases

Thu, 14 Feb 2013 09:35:00-0500

In Semiconductor Energy Lab. Co., Ltd. v. Yujiro Nagata, the Federal Circuit weighed in on federal subject matter jurisdiction and provided two important reminders:

(1) Just because a cause of action originates from a patent, standards in the patent statute, or even from other patent litigation, it is the present cause of action and claims that dictate whether subject matter jurisdiction is proper; and

(2) Subject matter jurisdiction, in this case federal question, must be sufficiently pled.

The background of this case is as follows: Semiconductor Energy Laboratory (“SEL”) owns U.S. Patent 6,900,463 (“the ’463 patent”). Dr. Yujiro Nagata (“Dr. Nagata”) is a named co-inventor of the ’463 patent. Dr. Nagata assigned his rights in any applications and patents related to the ’463 patent to SEL’s founder in 1991. He later signed a substitute Declaration and Assignment of those applications and patents. Dr. Nagata assisted SEL in a patent infringement lawsuit during the span of 2002 and 2003.

SEL sued Samsung for infringement of the ’463 patent in 2009. Dr. Nagata was contacted by Samsung to serve as a fact witness, which he agreed to do. Subsequently, SEL contacted Dr. Nagata assuming that he would cooperate with them during the litigation, as he had previously done. During the litigation, Dr. Nagata testified that he did not sign the 1991 Declarations and Assignments, but that his signature was forged. Samsung then argued that the ’463 patent was unenforceable because of inequitable conduct. Due to Dr. Nagata’s testimony the lawsuit was settled for less money than SEL otherwise would have considered.

SEL went on to sue Dr. Nagata in federal court, with five claims: (1) Declaratory Judgment – Violation of Federal Patent Law; (2) Declaratory Judgment – Anticipatory Breach of Contract; (3) Slander of Title; (4) Quiet Title; and (5) Unjust Enrichment. SEL asserted that the claim for declaratory judgment of violation of federal patent law was a federal question—one of the two bases for federal subject matter jurisdiction—and sought supplemental jurisdiction for the other causes of action. Dr. Nagata moved to have the case dismissed for lack of subject matter jurisdiction under Federal Rule of Civil Procedure 12(b)(1). The district court granted the motion and dismissed the case with prejudice. SEL appealed.

In order to invoke federal subject matter jurisdiction under federal question, the “complaint must either plead a federal cause of action or necessarily implicate a substantial issue of federal law.” SEL v. Nagata, Slip op., at p. 5. SEL’s argument in support of its “Declaratory Judgment – Violation of Federal Patent Law” claim was based on the doctrine of assignor estoppel. The Federal Circuit summarized the doctrine of assignor estoppel as, “an equitable doctrine that prohibits an assignor of a patent or patent application, or one in privity with him, from attacking the validity of that patent when he is sued for infringement by the assignee.” Id. at p. 6. SEL argued that the doctrine should be extended to apply not only as a defense limiting arguments by assignors, but offensively to estop assignees from undermining the validity of a patent as well. The Federal Circuit went on to note SEL did not plead or offer any precedent establishing that assignor estoppel is a federal cause of action. As such, the Court concluded,

SEL thus effectively invites us to create a new federal cause of action recognizing a supposed violation of the assignor estoppel doctrine under the Declaratory Judgment Act. . . . Despite SEL’s contentions, assignor estoppel is a form of estoppel, and with rare exception, estoppel is a shield; it is an affirmative defense, not a claim for relief on its own.

Id. at p. 7 (citations omitted). In light of this, the Court held that the doctrine of assignor estoppel as applied to patent law was not at issue in this case, since here it was the assignee, Dr. Nagata, who was undermining the validity of the patent. The court held that the underlying dispute in this case was an evidentiary one in the original case and the proper remedy were through the laws of evidence that permit impeachment and other methods of countering the credibility of a witness. Therefore, the district court’s dismissal of the case was affirmed.

This case raises two important points to consider when contemplating litigation. The first is that the present cause of action and claims dictate whether subject matter jurisdiction is proper, despite the fact that the dispute may have evolved from the patent statute or even patent litigation. The second is that the plaintiff’s complaint controls the litigation, or lack thereof when the case is dismissed under FRCP 12(b)(1). In this case, this meant that although there was arguably a basis to seek extension of a federal law doctrine, the insufficiency of the pleadings precluded the federal court from fully addressing the issue.

MVS Filewrapper® Blog: New and Useful - February 6, 2013

Wed, 06 Feb 2013 09:39:00-0500

· In Allergan, Inc. v. Barr Labs the Federal Circuit affirmed a decision by the District of Delaware finding that Barr Laboratories, Inc. and Sandoz Inc. had infringed a patent owned by Allergen, Inc., and finding the patent-in-suit valid. Barr and Sandoz each filed abbreviated new drug applications (ANDA) for a generic version of the drug covered by the Allergen patent, and both ANDAs asserted that the Allergen patent was invalid or would not be infringed by the manufacture, use, or sale of the new drugs for which the applications were submitted. Allergen sued Barr and Sandoz for infringement, and the suits were consolidated for a bench trial on invalidity and infringement. The district court construed a single disputed claim and determined Allergen had defined the disputed term in such a way in the specification as to cover the Barr and Sandoz products. The district court also declined to adopt the defendants’ arguments for invalidity based on obviousness. The defendants’ obviousness case at trial relied on the testimony of an expert. However, the district court determined that the expert’s testimony was undermined by his lack of credibility, as exposed on cross-examination. As a result, the district court declined to review the prior art references and weigh their import absent the guidance of an expert, and therefore concluded that Barr and Sandoz had failed to prove obviousness. The defendants appealed both the infringement and invalidity determinations, specifically asserting that the district court erred in not reviewing the prior art references and weighing their import notwithstanding the problems with the expert testimony.

On appeal, the Federal Circuit confirmed the district court’s claim construction and infringement determination. The Federal Circuit also confirmed the district court’s determination with respect to the expert witness and the resulting conclusions regarding invalidity and obviousness. Specifically, the court held that the district court did not err in its decision because the case was sufficiently complex to require expert testimony in making the determination of obviousness, and “common sense and logic were not sufficiently illuminating in this case to carry Barr and Sandoz's burden of proving obviousness.”

· In Arkema Inc. v. Honeywell International, Inc. the Federal Circuit reviewed a district court’s denial of declaratory judgment jurisdiction for a case involving two suppliers of an automotive coolant. Arkema Inc. brought a declaratory judgment action seeking judicial determination that its plans to supply automotive coolant to car manufacturers would not infringe Honeywell’s U.S. patents. This declaratory judgment action followed foreign litigation wherein Honeywell asserted European patents coving the same technology against Arkema. After the litigation commenced, Honeywell obtained two additional patents, and Arkema sought to amend its complaint to include declaratory judgment on these two additional patents. The district court denied Arkema’s motion, concluding that there was insufficient case or controversy for the court to exercise declaratory judgment jurisdiction. The district court then certified for appeal its order denying Arkema’s motion.

The Federal Circuit reversed the district court, addressing each of the district court’s rationales for declining jurisdiction in turn. In particular, the Federal Circuit held that the district court’s reliance on Arris Grp., Inc. v. British Telecommc’ns PLC was misplaced because while acts of direct infringement by a customer are sufficient to support DJ action by a supplier, they are not necessary. Further, the appellate court concluded that “[t]here is no requirement that Arkema identify the particular manufacturers that will purchase the [automotive coolant] or the particular automobile purchasers who will purchase the cars from the manufacturers, or the particular dates on which this will occur.” The Federal Circuit instead concluded that the basis for Arkema’s declaratory judgment jurisdiction was formed by the foreign litigation of the same technology along with contracts entered into by Arkema with customers for the supply of the automotive coolant. The case was remanded for reconsideration.

· In Accent Packaging, Inc. v. Leggett & Platt, Inc. the Federal Circuit reversed a grant of summary judgment by the United States District Court for the Southern District of Texas for the alleged infringer, Leggett & Platt. The district court granted summary judgment of non-infringement based on it construction of the terms “each” and “a respective one” within the phrase “with each of the operator bodies being operably coupled with a respective one of said gripper, knotter, cutting element and cover.” The district court construed the terms to mean that there could only be a single function for a single “operator body,” and as a result the accused device could not infringe the claims because it used operator bodies with multiple functions. Accent appealed the grant of summary judgment, challenging the district court’s claim construction.

The Federal Circuit reversed the grant of summary judgment, concluding that the district court improperly construed the terms at issue. The appellate court, conducting its own de novo claim construction, determined that the narrow construction asserted by Accent was improper because it excluded the preferred embodiment disclosed in the specification. The court held that the preferred embodiment featured an elongated operator body that is operably coupled to one or more operator elements, and because “a claim interpretation that excludes a preferred embodiment from the scope of the claim is rarely, if ever, correct” (On-Line Techs., Inc. v. Bodenseewerk Perkin-Elmer GmbH, 386 F.3d 1133, 1138 (Fed. Cir. 2004)), the district court’s claim construction doing just that was erroneous. Based on the Federal Circuit’s own claim construction, it remanded the case and ordered the district court to grant summary judgment of infringement to Accent. A more in depth analysis of this case will be posted shortly.

Supreme Court: Registration requirement of 411(a) not jurisdictional for copyright claims

Tue, 02 Mar 2010 12:32:00-0500

Today the Supreme Court decided Reed Elsevier, Inc. v. Muchnick, a case regarding whether the registration requirement of 17 U.S.C. § 411(a) is jurisdictional or a claim processing rule. The Court held the requirement to be nonjurisdictional.

The case involves a class action for copyright infringement by freelance journalists based on republication of works in electronic databases that originally appeared in, for example, newspapers. Some members of the class had copyright registrations, some did not. Nevertheless, the district court certified the class and approved the proposed settlement agreement. The Second Circuit sua sponte raised the issue of jurisdiction, and eventually held the district court lacked jurisdiction to enter an order regarding the unregistered copyrights by virtue of § 411(a).

The Supreme Court disagreed, and held the registration requirement of § 411(a) did not prevent a court from entering an order affecting unregistered copyrights. Specifically, the Court held there was nothing in the statute that indicated Congress intended the requirement to be jurisdictional. Notably, the Court observed § 411(a) did not "clearly state[]" that its requirement was jurisdictional, and also explicitly permits claims involving unregistered works in certain circumstances. This was inconsistent with a jurisdictional requirement, and therefore the district court had jurisdiction to approve the settlement agreement even though it adjudicated claims for unregistered copyrights.

The Court left the question as to whether district courts should sua sponte dismiss copyright cases where the Plaintiff is asserting an unregistered copyright for another day.

More detail of Reed Elsevier, Inc. v. Muchnick after the jump.

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Are patent holding companies subject to different DJ jurisdiction standards than others?

Mon, 14 Dec 2009 14:47:00-0500

According to the Federal Circuit, the answer to this question appears to be "yes." The court reversed a district court's dismissal of a declaratory judgment action against a patent holding company (or non-practicing entity (NPE), sometimes pejoratively referred to as a patent troll). The DJ action was predicated on three letters, the first from the NPE to the DJ plaintiff, the second in reply, and the third from the NPE in reply to the second. The court held there was a sufficient "implied assertion of its rights" under the patent to support DJ jurisdiction.

Of particular note are some statements the court made regarding different rules when NPEs contact potential licensees for their patents. These include:

[T]he receipt of such correspondence from a non-competitor patent holding company . . . may invoke a different reaction than would a meet-and-discuss inquiry by a competitor, presumably with intellectual property of its own to place on the bargaining table. Under the totality of the circumstances, therefore, it was not unreasonable for [the DJ plaintiff] to interpret [the NPE's] letters as implicitly asserting its rights under the patent.
. . .
[The NPE] is solely a licensing entity, and without enforcement it receives no benefits from its patents. This adds significance to the fact that [the NPE] refused [the DJ plaintiff's] request for a mutual standstill . . . .

Even the court observed it was changing the rules, noting "our decision in this case undoubtedly marks a shift from past declaratory judgment cases." Based on this decision, it appears very difficult for a NPE to even contact a potential licensee without exposing itself to the potential for a declaratory judgment action.

More detail of Hewlett-Packard Co. v. Acceleron LLC after the jump.

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Seventh Circuit: Notice requirement to Copyright Office when registration refused not jurisdictional

Tue, 22 Sep 2009 13:25:00-0500

In a recent decision, the Seventh Circuit affirmed a district court's grant of summary judgment that a plaintiff could not prevail in her copyright claim. The court first addressed whether the plaintiff complied with the necessary procedural requirements to have her claim heard. The plaintiff had filed for a copyright registration and had been rejected (thereby satisfying part of the requirements of § 411). However, when filing suit, she did not notify the Copyright Office she was doing so, and thus did not meet this second requirement applicable to those who bring suit after being refused registration.

This fact notwithstanding, the Seventh Circuit concluded it could hear the case, given the plaintiff had her registration refused. The court characterized the notification requirement as a case processing rule, and observed the copyright office had granted a registration in the interim, and thus the purpose of the notification requirement (to permit the Copyright Office to address the issue of registrability) was satisfied.

On the merits, the court noted the plaintiff's claim failed because she did not allege copying of any of the actual materials protected by copyright, but rather her ideas for better educating students. The court affirmed the long standing rule that copyright protection does not extend to ideas, but rather the original expression of an idea.

More detail of Brooks-Ngwenya v. Indianapolis Pub. Sch. after the jump.

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Ninth Circuit: Trademark claim against tribal corporation does not confer tribal court jurisdiction

Mon, 23 Mar 2009 08:58:00-0500

In a recent decision, the Ninth Circuit reversed a district court's grant of a motion to stay federal trademark claims against Indian tribal defendants pending a determination of jurisdiction by a tribal court. The trademark claims were for alleged passing off of cigarettes on the Internet, on the reservation of another tribe, and elsewhere. The district court ruled that there was at least a colorable claim to tribal jurisdiction under Supreme Court precedent and granted a stay of federal proceedings pending a determination of jurisdiction by the tribal court.

The Ninth Circuit reversed, holding there was not a colorable claim of jurisdiction in tribal court insofar as it implicated the plaintiff's federal trademark claim against the tribal defendants and its principals, members of the Yakama Tribe. Accordingly, allowing exhaustion of tribal remedies would serve no purpose other than delay. As a result, the court reversed the district court's decision and remanded for the case to proceed.

More on Philip Morris USA, Inc. v. King Mountain Tobacco Co. after the jump.

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Reliance on initial expert for rebuttal sufficient to defeat summary judgment

Fri, 20 Mar 2009 09:50:00-0500

In a decision Tuesday, the Federal Circuit reversed grants of summary judgment in favor of both parties. The defendant was granted summary judgment of noninfringement, and the plaintiff (and counterclaim defendant) was granted summary judgment on the grounds of no marking under 35 U.S.C. § 287. Both parties appealed.

The Federal Circuit determined there was a genuine issue of fact regarding infringement under the doctrine of equivalents of the plaintiff's patent. Only one element of the claim was disputed, and the plaintiff's expert provided a detailed analysis under the function-way-result test. In response, the defendant's expert testified there were two additional functions of the element in the accused device. In reply, the plaintiff's expert referred to his previous analysis without explicitly rebutting the defendant's expert's claims. The Federal Circuit stated the plaintiff's "decision to refer to the evidence already before the court should not be fatal," and held there was sufficient evidence to generate a question of fact on the issue of infringement. Accordingly, the court reversed the district court's grant of summary judgment on this issue.

Regarding the marking issue, the Federal Circuit noted the defendant only asserted infringement of method claims in its counterclaim. As such, the Federal Circuit held it was bound by its decision in Hanson v. Alpine Valley Ski Area, Inc., which held that marking is not required when only method claims are asserted in a case. As such, any failure to mark was irrelevant to the defendant's counterclaims of infringement, and the district court's summary judgment on this issue was reversed as well.

More detail of Crown Packaging Tech., Inc. v. Rexam Beverage Can Co. after the jump.

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Covenant to sue that does not cover future infringement insufficient to defeat DJ jurisdiction

Tue, 03 Mar 2009 16:06:00-0500

In a recent decision, the Federal Circuit reversed a district court's dismissal for lack of declaratory judgment jurisdiction over a defendant's counterclaims for non-infringement, invalidity, and unenforceability of a patent. The plaintiff brought suit against the defendant for infringement in 2003, and on the eve of trial on the issues of invalidity and unenforceability, offered a covenant not to sue for past infringement and filed a motion to dismiss. The district court granted the motion, holding there was no longer a case or controversy. The defendant appealed.

The Federal Circuit reversed, noting that the covenant not to sue did not cover future infringement, and the defendant had a large amount of stock of the accused products ready to sell pending the outcome of the case. The patentee asserted that if the defendant resumed sales, it would once again bring suit for infringement. Under these facts, the Federal Circuit agreed with the defendant and held that the plaintiff, by retaining its right to sue for future infringement, had preserved the controversy at a level of sufficient immediacy and reality to allow for declaratory judgment jurisdiction.

More detail of Revolution Eyewear, Inc. v. Aspex Eyewear, Inc. after the jump.

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United States did not waive immunity for copyright infringement claim brought by prisoner

Thu, 05 Feb 2009 17:05:00-0500

In a recent decision, the Federal Circuit held the Court of Federal Claims correctly dismissed a copyright infringement suit against the United States for lack of subject matter jurisdiction. The plaintiff is a federal prisoner who created various coyprightable works while in federal prison. He brought suit alleging copyright infringement after his works were distributed by Federal Prison Industries.

The Court of Federal Claims dismissed the case for lack of subject matter jurisdiciton, holding the government had not waived its sovereign immunity from suit in this context. The Federal Circuit affirmed, holding that because the calendars were created using government-furnished computers while the prisoner was in the "service" of the United States, sovereign immunity had not been waived under 28 U.S.C. § 1498(b). As a result, the Court of Federal Claims correctly held it lacked jurisdiction to hear the case.

More detail of Walton v. United States after the jump.

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District court's order dismissing the action with prejudice held to be nonfinal due to counterclaims

Wed, 17 Dec 2008 09:22:00-0500

In a decision Thursday, the Federal Circuit affirmed a district court's denial of a preliminary injunction, and held it did not have jurisdiction over the remainder of the appeal because there was no final judgment. It was undisputed there was no infringement under the district court's claim construction of the single element at issue. After denying the requested preliminary injunction and granting the defendant's motion for summary judgment of noninfringement, the district court entered an order that stated, among other things, that the "action" was "dismissed with prejudice," and that it was "final and appealable." However, the defendant had asserted counterclaims that were not mentioned in any of the briefing.

The Federal Circuit agreed with the district court's claim construction, and affirmed the denial of the preliminary injunction. However, the court held it did not have jurisdiction over the remainder of the appeal, because the defendant's counterclaims were still pending, making the judgment nonfinal. The court did have some advice for the plaintiff and the district court on remand in two footnotes, stating:

While we do not address the district court's grant of summary judgment of noninfringement, we note that the claim construction we affirm herein was the basis for that decision, there being no dispute over infringement of claim 26 under that claim construction.

Because we exercise jurisdiction only over the matters discussed above, we do not address the district court's sua sponte dismissal of [the plaintiff's] remaining claims in this appeal. Nevertheless, we suggest that the district court may wish to reconsider that determination in light of the Sixth Circuit's prohibition against sua sponte dismissals except in limited circumstances.

More detail of iLOR, LLC v. Google, Inc. after the jump.

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Patent exhaustion does not create a cuse of action; dismissal affirmed

Wed, 24 Sep 2008 12:01:00-0500

In a decision last week, the Federal Circuit affirmed a district court's decision dismissing a case for lack of subject matter jurisdiction. The plaintiff brought suit when it believed the patent holder had fraudulently concealed a second licensee of the same patents. The plaintiff was a licensee of the defendant patent holder and therefore could not seek a declaration of noninfringement, so instead brought suit alleging the patent holder had violated the "Patent Exhaustion/First Sale doctrine" by collecting royalties on the same product twice. The district court held patent exhaustion was not an independent cause of action but instead a defense to an infringement claim, and dismissed the case for lack of subject matter jurisdiction so any state law claims could be pursued in state court.

The Federal Circuit affirmed, observing the case met neither of the criteria for § 1338(a) jurisdiction under the Supreme Court's decision in Christianson v. Colt Industries Operating Corp. The complaint neither alleged claims created by federal patent law, nor was the plaintiff's right to relief dependent upon resolution of a substantial question of federal patent law. Accordingly, the court affirmed the district court's dismissal.

More detail of ExcelStor Tech., Inc. v. Papst Licensing GmbH & Co. after the jump.

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Eleventh Circuit: No DJ jurisdiction in copyright case when copyright unregistered

Wed, 24 Sep 2008 11:06:00-0500

In a recent decision, the Eleventh Circuit vacated a district court's grant of summary judgment in a copyright infringement declaratory judgment action. The court determined that the district court was without subject matter jurisdiction to entertain the alleged infringer's declaratory judgment action. This was because the district court would have lacked jurisdiction to hear the "reverse" claim, namely the copyright owner's claim for copyright infringement, because the copyright holder had not applied for a copyright registration on the computer programs at issue. Because there would be no jurisdiction over the infringement claim if brought, there was likewise no jurisdiction over the declaratory judgment claim seeking a declaration of no infringement.

More concerning Stuart Weitzman, LLC v. Microcomputer Res., Inc. after the jump.

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Covenant not to sue removes jurisdiction despite lingering Hatch-Waxman exclusivity issues

Mon, 15 Sep 2008 14:22:00-0500

In a recent decision, the Federal Circuit affirmed a district court's decision involving declaratory judgment jurisdiction in the context of abbreviated new drug applications (ANDAs) and a related covenant-not-to-sue involving one patent at issue. The court affirmed a covenant-not-to-sue coupled with a stipulation of validity and enforceability removed any case or controversy required for declaratory judgment jurisdiction.

The Federal Circuit also provided in-depth analysis and explanation about the market exclusivity provisions of the Hatch-Waxman Act as well as the impact of the Medicare Prescription Drug, Improvement and Modernization Act (MMA) passed by Congress amending the Hatch-Waxman Act. These provisions create unique issues in the context of declaratory judgment actions by potential generic drug manufacturers.

More on Janssen Pharmaceutica, N.V. v. Apotex, Inc. after the jump.

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No case or controversy when patentee doesn't even know of potentially infringing product

Thu, 21 Aug 2008 16:43:00-0500

In a decision last week, the Federal Circuit upheld a district court's decision that Article III jurisdiction did not exist in a case where a potential infringer was seeking a declaration of noninfringement. The district court granted a motion to dismiss the under the Federal Circuit's pre-MedImmune reasonable apprehension of suit test, noting that there was no reasonable apprehension of suit. In a footnote, the court noted that even if MedImmune v. Genentech had overruled this test, it would still conclude that there was no case or controversy because there was "no definite and concrete dispute that touches the legal relations of the parties." To the district court's credit, its decision was made shortly after MedImmune and without the benefit of the Federal Circuit's interpretation of MedImmune. Following the Federal Circuit's decision in Teva Pharmaceuticals USA, Inc. v. Novartis Pharmaceuticals Corp., the court reconsidered its ruling and decided under all the circumstances there was still not an Article III case or controversy.

The Federal Circuit affirmed. The court noted that there was no actual present injury traceable to the defendants nor had the defendants asserted any rights or taken affirmative actions against the declaratory judgment plaintiff. The court framed the issue of subject matter jurisdiction in the context of standing, ripeness, and lack of mootness, observing that "satisfying these doctrines represents the absolute constitutional minimum for a justiciable controversy." Here, there was insufficient evidence of standing, as there was no injury-in-fact that was fairly traceable to the patentee's conduct. When the case was filed, there had been no contact regarding the patent whatsoever between the patentee and the potential infringer. While the potential infringer argued that prior assertions of unrelated patents were sufficient to confer jurisdiction, the court disagreed, noting jurisdiction cannot be conferred by "a purely subjective or speculative fear of future harm." As a result, considering the totality of the circumstances, the court affirmed the district court's dismissal of the case.

More on Prasco LLC v. Medicis Pharm. Corp. after the jump.

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