Patents

• Author: International Law Group
• Pages: 35-37

Page 35

In an Oklahoma federal court, Jan Voda (Plaintiff) sued Cordis Corporation (Defendant) for the infringement of Plaintiff's U.S. patents. Plaintiff owns several patents on exploratory catheters usable by cardiologists. Three patents are from the U.S., while it obtained one each in the European Union, Britain, France, Germany and Canada.

The District Court held it had jurisdiction over Plaintiff 's U.S. claims, and granted him leave to amend his complaint to allege infringements of Plaintiff's foreign patents. The Court later exercised jurisdiction over those added foreign claims based on 28 U.S. C. ß 1367, the supplemental jurisdiction statute.

Cordis U.S. filed an interlocutory appeal. The U.S. Court of Appeals for the Federal Circuit rules that the District Court had erred in granting leave to amend under Section 1367, and remands.

At the outset, the Court notes that the existence of supplemental jurisdiction over foreign patent claims based on claims of U.S. patent infringements is a matter that is unique to U.S. patent law. The law of the circuit applies. Section 1367 confi rms the discretionary nature of supplemental jurisdiction. But it also requires that the claims of foreignPage 36 patent infringement "form part of the same case or controversy under Article III."

In this case, however, the Circuit Court need not reach this issue because the district court abused its discretion in fi nding supplemental jurisdiction under ß 1367(c). That section permits district courts to decline supplemental jurisdiction if (1) the claim raises a novel or complex issue of State law, or (2) the claim substantially predominates over the claim with original jurisdiction, or (3) the district court has dismissed all claims over which it has original jurisdiction, or (4) in exceptional circumstances, if there are other compelling reasons for declining to exercise jurisdiction.

The court below failed to apply ß 1367(c). Considerations of comity, judicial economy, convenience, fairness, and other exceptional circumstances form compelling reasons to decline supplemental jurisdiction in this case. See City of Chicago v. Int'l Coll. of Surgeons, 522 U.S. 156, 173 (1997).

"Plaintiff asserts (and one of the amicus curiae briefs suggests) that international treaties evince a trend of harmonization of patent law and thus, that allowing the exercise of supplemental jurisdiction over Plaintiff 's foreign patent infringement claims furthers the harmonization...