417 F. App'x 950
Fed. Cir.2011Background
- Chinsammy filed a provisional patent application with the PTO in 2006 and a non-provisional ’453 Application in 2007.
- The ’453 Application was published on July 3, 2008.
- The PTO issued a non-final rejection of the ’453 claims on January 27, 2010 for multiple grounds, including lack of enablement and obviousness.
- On September 7, 2010, the PTO issued a Notice of Abandonment for failure to respond to the first office action.
- Chinsammy filed suit in the Court of Federal Claims seeking damages for alleged U.S. infringement; the court dismissed for lack of jurisdiction because no valid patent was issued.
- Chinsammy appeals to this court, which affirms the dismissal for lack of jurisdiction.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Is the Court of Federal Claims' jurisdiction triggered by a patent application or provisional patent? | Chinsammy asserts the invention is described by a patent application. | The statute requires a granted patent, not a patent application. | No jurisdiction without a granted patent. |
| Does filing a provisional application create any patent rights for jurisdiction under 1498? | Provisional filing can establish priority. | Provisional filing does not create patent rights. | Provisional status does not confer patent rights for §1498 claims. |
| Did abandonment of the application destroy any basis for jurisdiction? | Chinsammy contends abandonment is immaterial to jurisdiction. | Abandonment shows no valid patent exists. | Abandonment confirms lack of patent, jurisdiction not established. |
Key Cases Cited
- Patton v. United States, 75 F. Supp. 470 (Ct. Cl. 1948) (no jurisdiction without a patent)
- Fulmer v. United States, 144 Ct. Cl. 812 (Ct. Cl. 1959) (no jurisdiction to hear unauthorized use of unpatented device)
- E.I. Du Pont De Nemours & Co. v. MacDermid Printing Solutions, L.L.C., 525 F.3d 1353 (Fed. Cir. 2008) (provisional filing does not create a patent right)