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Category: Subject matter jurisdiction


StoneEagle v. Gillman - Patent Inventorship, Authorship, and Ownership
March 31, 2014
Post by Blog Staff
In StoneEagle Services, Inc.,v. Gillman the Federal Circuit confirmed that assistance in reducing aninvention to practice generally does not contribute to inventorship. In this case, the issue centered on whether there was a sufficient controversy regarding inventorship for the case to remain in federal court. The plaintiff alleged that the defendant had "falsely claimed that it is his patent, that he wrote .......
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U.S. Supreme Court Addresses Jurisdiction In Patent Related Case
February 21, 2013
Post by Blog Staff
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Federal Circuit Addresses Subject Matter Jurisdiction in Patent-Related Cases
February 14, 2013
Post by Blog Staff
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) .......
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New and Useful - February 6, 2013
February 06, 2013
Post by Blog Staff
· 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 tha.......
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Supreme Court: Registration requirement of 411(a) not jurisdictional for copyright claims
March 02, 2010
Post by Blog Staff
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 .......
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Are patent holding companies subject to different DJ jurisdiction standards than others?
December 14, 2009
Post by Blog Staff
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 .......
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Seventh Circuit: Notice requirement to Copyright Office when registration refused not jurisdictional
September 22, 2009
Post by Blog Staff
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 § .......
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Ninth Circuit: Trademark claim against tribal corporation does not confer tribal court jurisdiction
March 23, 2009
Post by Blog Staff
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.......
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Reliance on initial expert for rebuttal sufficient to defeat summary judgment
March 20, 2009
Post by Blog Staff
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 unde.......
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Covenant to sue that does not cover future infringement insufficient to defeat DJ jurisdiction
March 03, 2009
Post by Blog Staff
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 f.......
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United States did not waive immunity for copyright infringement claim brought by prisoner
February 05, 2009
Post by Blog Staff
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 .......
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District court's order dismissing the action with prejudice held to be nonfinal due to counterclaims
December 17, 2008
Post by Blog Staff
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 .......
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Patent exhaustion does not create a cuse of action; dismissal affirmed
September 24, 2008
Post by Blog Staff
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.......
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Eleventh Circuit: No DJ jurisdiction in copyright case when copyright unregistered
September 24, 2008
Post by Blog Staff
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" cla.......
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Covenant not to sue removes jurisdiction despite lingering Hatch-Waxman exclusivity issues
September 15, 2008
Post by Blog Staff
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 judgme.......
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No case or controversy when patentee doesn't even know of potentially infringing product
August 21, 2008
Post by Blog Staff
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 foot.......
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Tenth Circuit: MedImmune declaratory judgment jurisdiction test applies in trademark cases
July 18, 2008
Post by Blog Staff
In a decision last week, the Tenth Circuit reversed a district court's decision that Article III jurisdiction did not exist over a declaratory judgment action in a trademark case. At issue was whether a triable case or controversy within the meaning of Article III existed in declaratory judgment action regarding trademark infringement. The district court, applying the Tenth Circuit's pre-MedImmune stand.......
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Second prong of declaratory judgment jurisdiction test survived MedImmune
May 29, 2008
Post by Blog Staff
In a decision yesterday, the Federal Circuit affirmed a district court's grant of summary judgment of noninfringement and its related finding that the court had declaratory judgment jurisdiction. The court, for the first time since the Supreme Court's MedImmune decision, addressed the second prong of its pre-MedImmune declaratory judgment test. The court held this portion of the test, requiring ".......
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Fifth Circuit passes on eBay's applicability in trademark cases
May 29, 2008
Post by Blog Staff
In a decision last week, the Fifth Circuit affirmed a district court's conclusion it had subject matter jurisdiction over a trademark case, as well as its grant of a preliminary injunction. While the activities giving rise to the claim of trademark infringement took place in Mexico, they had a "substantial effect" on United States commerce, and thus were within the court's subject matter jurisd.......
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Offer of judgment providing full recovery mooted case, preventing opinion regarding spoliation
May 01, 2008
Post by Blog Staff
In a decision Tuesday, the Federal Circuit vacated a district court's order denying a declaratory judgment plaintiff attorney fees, but including a scathing description of alleged spoliation by the patentee/DJ defendant. The Federal Circuit held that the district court's decision was an improper advisory opinion, and therefore vacated with instructions to dismiss.The patentee, before bringing suit agains.......
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Elements of infringement claim not jurisdictional; "sale" occurs at location of buyer and seller
April 29, 2008
Post by Blog Staff
In a decision yesterday, the Federal Circuit affirmed a district court's denial of the defendant's motion to dismiss for lack of subject matter jurisdiction. The court also denied the defendant's post-verdict motion for judgment as a matter of law. The defendant contended that because it shipped its allegedly infringing products f.o.b. from its place of business in Canada, it did not sell or import.......
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Covenant not to sue insufficient to defeat DJ jursidiction because of Hatch-Waxman issues
April 21, 2008
Post by Blog Staff
In a recent decision, the Federal Circuit addressed the issue of declaratory judgment jurisdiction in the context of the Hatch-Waxman Act. The court found that a unilateral covenant not to sue on a patent does not defeat declaratory judgment jurisdiction because there is still a "restraint on the free exploitation of non-infringing goods." This case had a somewhat peculiar factual scenario: the first.......
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271(e) safe harbor applies to both product and method claims in ITC proceedings
March 19, 2008
Post by Blog Staff
In a ruling today, the Federal Circuit affirmed in part a decision by the International Trade Commission (ITC) concerning the application of 19 U.S.C. § 1337 and 35 U.S.C. § 271(e)(1) to imported products and products imported produced via a patented process. The main issue before the court was whether the safe harbor against infringement provided by § 271(e) applies in proceedings under §.......
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When DJ and infringement suits both filed, transfer factors determine appropriate forum
March 05, 2008
Post by Blog Staff
In a decision Friday, the Federal Circuit decided a case addressing the requirements for a declaratory judgment action post-MedImmune . The court reversed and remanded a district court's decision that there was no declaratory judgment jurisdiction applying the pre-MedImmunereasonable apprehension of suit standard rejected by the Supreme Court. The Federal Circuit applied the MedIm.......
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Discovery needed to determine effect of employment agreement on patent ownership, but no jury trial
February 14, 2008
Post by Blog Staff
In a decision yesterday, the Federal Circuit remanded a case for further discovery, finding that the district court abused its discretion by denying jurisdictional discovery regarding patent ownership due to the "central relevance" of the information. The patent ownership dispute arose from an employment contract between one of the two inventors and his employer that purportedly assigned all inventions.......
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Disclosure of prior art abstract only when more relevant detail known results in inequitable conduct
January 28, 2008
Post by Blog Staff
In a decision Friday, the Federal Circuit affirmed a district court's finding of inequitable conduct based on nondisclosure of details of a poster presentation presented at a scientific conference. While the patentee disclosed the abstract during prosecution of the patents-in-suit, notes taken by one of the patentee's employees with much more detail of what was actually presented at the conference were n.......
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Second Circuit: Copyright registration is a jurisdictional requirement
December 03, 2007
Post by Blog Staff
Last week, the Second Circuit issued a decision addressing whether the registration requirement for bringing a copyright action was jurisdictional or merely a "claim processing" rule. The decision turned on whether the Supreme Court's decision in Eberhart v. United States reduced the class of "jurisdictional" statutes such that 17 U.S.C. § 411(a) should be considered a "claim pr.......
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Remand to state court resulting from declining supplemental jurisdiction unreviewable on appeal
November 13, 2007
Post by Blog Staff
Addressing an issue of first impression, the Federal Circuit today held that a district court's decision remanding a case to state court on the basis of declining supplemental jurisdiction was unreviewable. The court determined that this decision was within the class of remands described in 28 U.S.C. § 1447(c). Because of this, review was barred by § 1447(d), and the court dismissed the appeal.Thi.......
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Ninth Circuit: DJ dismissal reversed; concurrent TTAB proceedings, Rule 408 don't warrant dismissal
October 17, 2007
Post by Blog Staff
On Monday, the Ninth Circuit addressed the issue of a federal court's subject matter jurisdiction over a trademark declaratory relief action when an infringement action has not been brought and proceedings related to the trademark are pending at the Trademark Trial and Appeal Board (TTAB). The district court dismissed the case as not presenting a sufficient case or controversy to support jurisdiction, and a.......
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Patent prosecution malpractice claim properly heard in federal court and appealed to Federal Circuit
October 16, 2007
Post by Blog Staff
In its second decision yesterday in a legal malpractice case, the Federal Circuit affirmed the district court's decision that jurisdiction was proper over a legal malpractice claim on the basis that the malpractice claim involved a question of claim scope which presented a substantial question of patent law. The alleged malpractice involved prosecution of a patent using "consisting of" in a claim a.......
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Malpractice claim regarding patent prosecution and litigation sufficient for federal jurisdiction
October 15, 2007
Post by Blog Staff
In a decision today, the Federal Circuit affirmed a district court decision finding that where patent infringement is a necessary element of a malpractice claim arising from alleged patent prosecution errors as well as the mishandling of prior patent litigation, federal question subject matter jurisdiction exists.More detail of Air Measurement Techs., Inc. v. Akin Gump Strauss Hauer & Feld, L.L.P. after the j.......
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Declaratory judgment jurisdiction exists, sufficient corroboration of prior public use to invalidate
September 24, 2007
Post by Blog Staff
In a decision last week, the Federal Circuit upheld a district court's decision that a case or controversy existed providing subject matter jurisdiction and that the patent was invalid under 35 U.S.C. § 102(b) based on a public use more than a year before the patent's priority date. A licensee's decision to stop royalty payments combined with a threat to pursue legal action in response created .......
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Federal Circuit reverses dismissal of DJ action; sufficient case or controversy exists
August 06, 2007
Post by Blog Staff
The Federal Circuit recently vacated the District Court for the Southern District of California's judgment granting a motion to dismiss five plaintiffs' (four joined on the appeal) declaratory judgment complaints for lack of subject matter jurisdiction, and remanded the case back to the district court to determine in its discretion whether to entertain the declaratory judgment actions.More details of Son.......
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Statements in specification lead to narrower claim construction and noninfringement
August 06, 2007
Post by Blog Staff
In a decision on Friday, the Federal Circuit affirmed a district court decision granting summary judgment of noninfringement. The only claim at issue required motors to apply a "pushing" force. The defendant's motors applied a "pulling" force that was, through intermediate apparatus, translated to a "pushing" force, but the court held that the patentee had disclaimed such devic.......
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Dismissal and covenant not to sue for past acts divests court of jurisdiction
July 20, 2007
Post by Blog Staff
In a case decided today, the Federal Circuit affirmed a district court's dismissal of a patent infringement defendant's counterclaim for invalidity for lack of subject matter jurisdiction. The patent holder voluntarily dismissed its claims for infringement and agreed not to sue for acts occurring before the dismissal, and there was an insufficiently "immediate" controversy between the parties t.......
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Federal Circuit: no jurisdiction over contempt appeal, but dissolution of injunction affirmed
June 14, 2007
Post by Blog Staff
In a decision Wednesday, the Federal Circuit dismissed an appeal of a contempt order for lack of jurisdiction and ruled that the district court did not abuse its discretion in dissolving a preliminary injunction. The defendant was found in contempt of a preliminary injunction, but also found two new pieces of prior art that made out an invalidity case having substantial merit. The plaintiff failed to prove othe.......
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Federal Circuit addresses claim construction, on-sale and public use bars, and DJ jurisdiction
May 26, 2007
Post by Blog Staff
In a decision Friday, the Federal Circuit vacated in part a district court's claim construction of a several terms as well as its decision to find no infringement of patents owned by Honeywell. The court did, however, affirm the district court's retention of jurisdiction over the several withdrawn claims and the decision that Honeywell's pre-critical date activities were not barring sales or public u.......
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Another post-MedImmune declaratory judgment jurisdiction decision
March 30, 2007
Post by Blog Staff
The Federal Circuit addressed the requirements for declaratory judgment jurisdiction in a published decision for the second time this week. This time the parties are pharmaceutical companies, but the result is the same: the lower court, applying the old "reasonable apprehension of suit" standard, found no jurisdiction, the Federal Circuit, applying a post-MedImmune standard reverses, finds that jurisdi.......
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Federal Circuit considers DJ jurisdiction post-MedImmune: Is an offer of license now enough?
March 26, 2007
Post by Blog Staff
In a very interesting opinion, the Federal Circuit today addressed what is required to support jurisdiction for a declaratory judgment by a party under threat of a possible patent infringement lawsuit. This is the first substantive discussion of the issue since the Supreme Court's decision in MedImmune, where the Court held that a patent licensee need not breach the license in order to challenge the validity .......
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Jurisdiction over Foreign Patents Requires - 1367(c) Analysis
February 02, 2007
Post by Blog Staff
The question before the Federal Circuit in Jan K. Voda, M.D. v. Cordis Corporation was whether where an accused infringer is shown to have moved its infringing activities offshore to Germany, the U.K. and elsewhere, does supplemental jurisdiction of the court, pursuant to 28 U.S.C. ? 1367, permit an infringement determination under the parallel foreign patents, where all patents originate from a single Patent Coo.......
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Roundup of media coverage of "MedImmune v. Genentech" decision
January 17, 2007
Post by Blog Staff
After last week's Supreme Court decision in MedImmune v. Genentech holding a patent licensee in good standing need not breach the license agreement in order to bring a claim that the patent is invalid, not infringed, or unenforceable, the media has begun to offer its perspective on the case. Below is a sampling of the media coverage, which basically is in agreement that the decision makes it easier to challen.......
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Supreme Court: patent licensee need not cease royalty payments to challenge patent's vaildity
January 09, 2007
Post by Blog Staff
Today the Supreme Court decided MedImmune v. Genentech, a case about the power of federal courts to decide issues related to patent infringement and validity when one party to the dispute is currently licensing the patent from the other party. In an 8-1 decision, the Court held that a licensee need not stop paying royalties, thereby breaching the license agreement, in order for courts to have jurisdiction to con.......
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Federal Circuit Addresses On Sale Bar
December 18, 2006
Post by Blog Staff
In Plumtree Software, Inc. v. Datamize, LLC, the Federal Circuit Court of Appeals revisited the issue of determining when an invention is on sale within the meaning of 35 U.S.C. 102(b). A claimed invention is considered to be on sale under ? 102(b) if the invention is sold or offered for sale more than one year before the filing date of the patent application. If the applicant files a patent application after th.......
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The attorneys of McKee, Voorhees & Sease, P.L.C. designed this blog as an informational and educational resource about intellectual property law for our clients, other attorneys, and the public as a whole. Our goal is to provide cutting-edge information about recent developments in intellectual property law, including relevant case law updates, proposed legislation, and intellectual property law in the news.

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