Elements of infringement claim not jurisdictional; “sale” occurs at location of buyer and seller

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 […]

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Covenant not to sue insufficient to defeat DJ jursidiction because of Hatch-Waxman issues

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 […]

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271(e) safe harbor applies to both product and method claims in ITC proceedings

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 […]

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When DJ and infringement suits both filed, transfer factors determine appropriate forum

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 MedImmunerequirement for a […]

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Discovery needed to determine effect of employment agreement on patent ownership, but no jury trial

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 […]

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Disclosure of prior art abstract only when more relevant detail known results in inequitable conduct

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 […]

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Second Circuit: Copyright registration is a jurisdictional requirement

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 […]

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Remand to state court resulting from declining supplemental jurisdiction unreviewable on appeal

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 […]

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Ninth Circuit: DJ dismissal reversed; concurrent TTAB proceedings, Rule 408 don’t warrant dismissal

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 […]

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Patent prosecution malpractice claim properly heard in federal court and appealed to Federal Circuit

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 […]

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