Jan K. VODA, M.D., Plaintiff-Appellee, v. CORDIS CORPORATION, Defendant-Appellant.
No. 05-1238.
United States Court of Appeals, Federal Circuit.
Feb. 1, 2007.
476 F.3d 887
Youngman‘s other arguments in large part reduce to an appeal to the fairness of the outcome. If Richardson had survived longer, Youngman argues that Richardson could have been paid the accrued benefits, but, under the Veterans Court‘s decision, unfairness results because the benefits are not payable to anyone. But that is the law. However regrettable it is that Richardson‘s benefits may not be payable to anyone, “[t]his court can only interpret the statutes that are enacted by the Congress. ... We are simply powerless to amend any statutory provision sua sponte.” Boyer v. West, 210 F.3d 1351, 1356 (Fed. Cir.2000).
We therefore must affirm the Veterans Court‘s denial of the motion to substitute Youngman as the petitioner in Richardson‘s posthumous claim for benefits. In light of this decision, the petition for a writ of mandamus is moot, and the Veterans Court accordingly correctly dismissed the petition.
CONCLUSION
We affirm the Veterans Court‘s denial of the motion to substitute Youngman and the court‘s dismissal of the petition for writ of mandamus as moot.
AFFIRMED.
John M. DiMatteo, Willkie Farr & Gallagher LLP, of New York, NY, argued for defendant-appellant. With him on the brief were Kelsey I. Nix and Diane C. Ragosa.
William C. Rooklidge, Howrey LLP, of Irvine, California, for amicus curiae American Intellectual Property Law Association. With him on the brief were Christоpher J. Kelly, Mayer, Brown, Rowe & Maw LLP, of Washington, DC; and Claudia Wilson Frost and Sharon A. Israel, of Houston, TX.
William M. Atkinson, Alston & Bird LLP, of Charlotte, NC, for amicus curiae The Federal Circuit Bar Association. With him on the brief was Charles F. Schill, The Federal Circuit Bar Association, of Washington, DC.
Scott R. McIntosh, Attorney, Appellate Staff, Civil Division, United States Department of Justice, of Washington, DC, for amicus curiae United States. With him on the brief were Peter D. Keisler, Assistant Attorney General. Of counsel on the brief were James A. Toupin, General Counsel, John M. Whealan, Solicitor, Cynthia C. Lynch and Joseph G. Piccolo, Associate Solicitors, United States Patent and Trademark Office, of Arlington, VA.
George L. Graff, Paul, Hastings, Janofsky & Walker LLP, of New York, NY, for amicus curiae Intellectual Property Owners Association. With him on the brief were J. Jeffrey Hawley, Intellectual Property Owners Association, of Washington, DC, and Douglas K. Norman, Eli Lilly and Company, of Indianapolis, Indiana. Of counsel was Herbert C. Wamsley, Intellectual Property Owners Association, of Washington, DC.
John R. Thomas, Georgetown University Law Center, of Washington, DC, for amici curiae Law Professors.
Before NEWMAN, GAJARSA, and PROST, Circuit Judges.
GAJARSA, Circuit Judge.
This is an interlocutory appeal by Cordis Corp. from a decision of the U.S. District Court for the Western District of Oklahoma assuming supplemental subject matter jurisdiction pursuant to
In Stein Associates, Inc. v. Heat & Control, Inc., 748 F.2d 653, 658 (Fed.Cir.1984), this court held that U.S. district courts had no discretionary power to enjoin a party from enforcing a foreign patent before a foreign tribunal. We stated unequivocally that “the issues are not the same, one action involving United States patents and the other involving British patents” and that “[o]nly a British court, applying British law, can determine validity and infringement of British patents.” In this case, we are presented with a different issue but one that raises similar concerns: whether a district court may exercise supplemental jurisdiction pursuant to
I. BACKGROUND
The plaintiff-appellee Voda is a resident of Oklahoma City, Oklahoma. The defendant-appellant Cordis is a U.S.-based entity incorporated in Florida. None of the several foreign Cordis affiliates is a party to the present action, and we note that they appear to be separate legal entities.1 These foreign affiliates have not been joined to this action.2 To prevent confusion, we refer to the defendant-appellant as “Cordis U.S.”
The patents at issue relate generally to guiding catheters for use in interventional cardiology. The details of the technоlogy are not essential here. Voda‘s U.S. patents stem from a common continuation-in-part (“CIP“) application filed in October 1992, which provides the written description common to the three U.S. patents at issue in this case: U.S. Patent Nos. 5,445,625 (the ‘625 patent), 6,083,213 (the ‘213 patent), and 6,475,195 (the ‘195 patent). The foreign patents issued from a common Patent Cooperation Treaty (“PCT“) application. The PCT application designated the European Patent Office (“EPO“) and Canada as recipients. Voda‘s EPO patent application eventually generated European Pat. No. 0 568 624, British Pat. No. GB 568 624, French Pat. No. FR568624, and German Pat. No. DE 69 23 20 95. The PCT application also ultimately led to the issuance of Canadian Pat. No. CA 2,100,785.
Voda sued Cordis U.S. in the United States District Court for the Western District of Oklahoma alleging infringement of
Voda then moved to amend his complaint to add claims of infringement of the European, British, Canadian, French, and German foreign patents. Voda‘s amended complaint alleges that “Cordis [U.S.] has commenced and continues acts of making, selling, offering for sale and selling at least the XB guiding catheter, which is covered by [the several foreign patents] without Dr. Voda‘s authority. Such acts constitute infringement, under corresponding foreign law of [these several foreign patents].” Cordis U.S. has admitted that “the XB catheters have been sold domestically and internationally since 1994. The XB catheters were manufactured in Miami Lakes, Florida from 1993 to 2001 and have been manufactured in Juarez, Mexico since 2001.” Voda‘s amended complaint asks for damages, fees, and “such other and further relief as this Court deems just and proper.” We resolve the jurisdictional issue based upon those allegations, accepting them to be true.
Cordis U.S. opposed Voda‘s attempt to amend its complaint to add foreign patent infringement claims on the basis that the district court lacked subject matter jurisdiction over such claims. The parties briefed the court regarding its jurisdiction over foreign patent infringement claims under
Cordis U.S. appeals, and in light of this appeal, the proceedings with respect to the foreign patent infringement claims have been stayed.3 The record indicates that an answer to the amended complaint has not been filed and that discovery has not been taken on the foreign claims. While the record therefore does not establish the defenses Cordis U.S. would raise, Cordis U.S. represents on appeal that it would raise invalidity of the foreign patents as a defense.
A proper exercise of subject matter jurisdiction pursuant to
II. STANDARD OF REVIEW
The existence of supplemental jurisdiction over foreign patent claims based
We have noted that “[t]his Court ... reviews jurisdiction, a question of law, de novo.” Dehne v. United States, 970 F.2d 890, 892 (Fed. Cir.1992) (citation omitted); see also Elder v. Holloway, 510 U.S. 510, 516, 114 S.Ct. 1019, 127 L.Ed.2d 344 (1994) (“[Q]uestion[s] of law ... must be resolved de novo on appeal.“). “A party seeking the exercise of jurisdiction in its favor bears the burden of establishing that such jurisdiction exists.” Mars, 24 F.3d at 1372 (citing KVOS, Inc. v. Associated Press, 299 U.S. 269, 278, 57 S.Ct. 197, 81 L.Ed. 183 (1936)); cf. DaimlerChrysler Corp. v. Cuno, ___ U.S. ___, 126 S.Ct. 1854, 1861, 164 L.Ed.2d 589 (2006) (“[P]arties asserting federal jurisdiction[] carry the burden of establishing their standing under Article III.“). Here, Voda must carry this burden.
III. DISCUSSION
The Supreme Court has stated many times that the “district courts of the United States ... are ‘courts of limited jurisdiction. They possess only that power authorized by Constitution and statute.‘” Exxon Mobil Corp. v. Allapattah Servs., 545 U.S. 546, 552, 125 S.Ct. 2611, 2616-17, 162 L.Ed.2d 502 (2005) (quoting Kokkonen v. Guardian Life Ins. Co. of Am., 511 U.S. 375, 377, 114 S.Ct. 1673, 128 L.Ed.2d 391 (1994)). In addition, “district courts may be obligated not to decide state law claims (or to stay their adjudication) where one of the abstention doctrines articulated by [the Supreme] Court applies.” City of Chicago v. Int‘l Coll. of Surgeons, 522 U.S. 156, 174, 118 S.Ct. 523, 139 L.Ed.2d 525 (1997).
In this case, the parties do not dispute that the Constitution may authorize district courts to hear infringement claims based on foreign patents. See
Voda asserts that the district court has supplemental jurisdiction under
The Supreme Court has also noted that
1. Authorization
Except as provided in subsections (b) and (c) or as expressly provided otherwise by Federal statute, in any civil action of which the district courts have original jurisdiction, the district courts shall have supplemental jurisdiction over all other claims that are so related to claims in the action within such original jurisdiction that they form part of the same case or controversy under Article III of the United States Constitution. Such supplemental jurisdiction shall include claims that involve the joinder or intervention of additional parties.
First,
Second,
Third,
Fourth,
In this case, it is undisputed that the district court has original federal question jurisdiction over Voda‘s U.S. patent infringement claims. In addition,
a. “Common nucleus of operative fact”
The Supreme Court has interрreted the statutory requirement of
principles of pendent and ancillary jurisdiction by which the federal courts’ original jurisdiction over federal questions carries with it jurisdiction over state law claims that “derive from a common nucleus of operative fact,” such that “the relationship between [the federal] claim and the state claim permits the conclusion that the entire action before the court comprises but one constitutional ‘case.‘”
Chicago, 522 U.S. at 164-65 (quoting United Mine Workers of Am. v. Gibbs, 383 U.S. 715, 725, 86 S.Ct. 1130, 16 L.Ed.2d 218 (1966)) (additional citations omitted) (emphasis added); see also 13B Wright, Miller, Cooper & Freer, Federal Practice & Procedure § 3567.1, at n. 42 (2d ed. Supp.2005).
With regard to the relationship between foreign and U.S. patent infringement claims, we stated in Stein that “the issues are not the same” where “one action involv[es] United States patents and the other involv[es] British patents.” 748 F.2d at 658. Mars, 24 F.3d 1368, however, is the first and only case of this court that expressly evaluates whether supplemental jurisdiction under
We conclude that the foreign patent infringement claim at issue here is not so related to the U.S. patent infringement claim that the claims form part of the same case or controversy and would thus ordinarily be expected to be tried in one proceeding. [1] The respective patents are different, [2] the accused devices are different, [3] the alleged acts are different, and [4] the governing laws are different. The assertion of supplemental jurisdiction over the Japanese infringement claim would in effect result in the trial court having to conduct twо separate trials at one time.
Id. Regarding the first three factors, we noted (1) that in the U.S. patent “[a]ll three claims are method claims directed to the electronic examination and identification of coins” whereas “[i]n contrast, the sole claim of the Japanese Patent ... is an apparatus claim that does not literally contain the limitations of [the asserted] claims ... of the U.S. patent“; (2) that the claims of U.S. and Japanese patent infringement focused on different devices and that “the range of accused devices in Japan is much broader than in the United States“; and (3) that although Mars charged the defendant with acts of both direct and induced infringement of its U.S. patent, it charged the defendant with only direct infringement of the Japanese patent. Id.
In this case, Voda does not dispute the assertion of Cordis U.S. that the “governing laws in each of the foreign courts differ in important ways.” The parties dispute whether the patents are different. Cordis U.S. asserts that the patents differ materially, while Voda asserts that they differ only in slight respects.6 With respect to the other factors, however, there appear to be more commonalities than in Mars. Voda‘s amended complaint identifies Cordis U.S.‘s XB guiding catheter as the accused device for the domestic and foreign infringement claims. Voda also alleges the same type of direct infringement, i.e., making, offering for sale, and selling, for all infringement claims.
In addition, it is important to note that Mars does not supplant the “common nucleus of operative fact” test established by the Supreme Court in Gibbs and codified by Congress in
The district court failed to articulate any such analysis. The district court correctly observed that Mars did not establish a per se rule preventing U.S. courts from asserting supplemental jurisdiction to adjudicate foreign patents, but then summarily concluded that the “allegations in the amended complaint demonstrate that this case [wa]s more akin to Ortman [, 371 F.2d 154
Here, the district court did not articulate any findings regarding the Mars factors.7 Moreover, although the determination of foreign law is a question of law, we as an appellate court cannot take any expert testimony to determine the extent of the differences in the governing laws. See
b. “Ordinarily be expected to try them all in one judicial proceeding”
Seizing on the Supreme Court‘s language in Gibbs, one of the amicus curiae asserts that in determining the existence of “the same case or controversy” under
While courts generally focus on the phrase “common nucleus of operative fact,” there is an ambiguity in Gibbs, in which the Supreme Court stated:
The federal claim must have substance sufficient to confer subject matter jurisdiction on the court. The state and federal claims must derive from a common nucleus of operative fact. But if, considered without regard to their federal or state character, a plaintiff‘s claims are such that he would ordinarily be expected to try them all in one judicial proceeding, then, assuming substantiality of the federal issues, there is power in federal courts to hear the whole.
383 U.S. at 725 (citation and footnote omitted) (emphasis added). From the text of Gibbs, it is therefore unclear how the phrases “common nucleus of operative fact” and “ordinarily be expected to try them all in one judicial proceeding” relate.
The Court‘s subsequent use of the Gibbs language indicates that the phrases could represent two separate and necessary tests or that the phrase “ordinarily be expected” is irrelevant. Compare Exxon, 125 S.Ct. at 2632 (Ginsburg, J., dissenting) (” ‘[T]here is power in federal courts to hear the whole,’ the Court said, when the state and federal claims ‘derive from a common nucleus of operative fact’ and are so linked that the plaintiff ‘would ordinarily be expected to try them all in one judicial proceeding.’ ” (emphasis added)), and Carnegie-Mellon Univ. v. Cohill, 484 U.S. 343, 349, 108 S.Ct. 614, 98 L.Ed.2d 720 (1988) (“The Court stated that a feder
Similarly, this court‘s use of the Gibbs language indicates that the phrases could represent two separate and necessary tests or that the phrase “ordinarily be expected to try them all in one judicial proceeding” merely informs the “common nucleus of operative fact” analysis. Compare Stark v. Advanced Magnetics, Inc., 29 F.3d 1570, 1578 (Fed.Cir.1994) (finding
If the phrase “ordinarily be expected to try them all in one judicial proceeding” does play a role in the scope of
Accordingly, we refrain from deciding whether Voda‘s foreign patent infringement claims fall within the scope of the “same case or controversy” requirement of
2. Discretion
The district courts may decline to exercise supplemental jurisdiction over a claim under subsection (a) if—
- the claim raises a novel or complex issue of State law,
- the claim substantially predominates over the claim or claims over which the district court has original jurisdiction,
- the district court has dismissed all claims over which it has original jurisdiction, or
- in exceptional circumstances, there are other compelling reasons for declining jurisdiction.
Voda asserts that such considerations “have nothing to do with, the certified question concerning existence of subject-matter jurisdiction.” We disagree. The text of
a. Treaties as the “supreme law of the land”
Article VI of the Constitution proclaims that “all treaties made, or which shall be made, under the authority of the United States, shall be the supreme law of the land.”
The United States entered into Articles 13 through 30 of the Paris Convention for the Protection of Industrial Property (“Paris Convention“) on September 5, 1970 and Articles 1 through 12 of the Paris Convention on August 25, 1973. Paris Convention, art. 13-30, 21 U.S.T. 1583; id., art. 1-12, 24 U.S.T. 2140. Article 4 bis of the Paris Convention states that U.S. patents “shall be independent of patents obtained for the same invention in other countries” and that the “foregoing provision is to be understood in an unrestricted sense, ... both as regards the grounds for nullity and forfeiture.” In addition, Article 2(3) of the Paris Convention states that the “provisions of the laws of each of the countries of the Union relating to judicial and administrative procedure and to juris-
Subsequently, the United States adopted the Patent Cooperation Treaty (“PCT“) on January 24, 1978. Patent Cooperation Treaty, 28 U.S.T. 7645. As with the Paris Convention, the text of the PCT maintains the independence of each country‘s patents. Article 27(5) states: “Nothing in this Treaty and the Regulations is intended to be construed as prescribing anything that would limit the freedom of each Contracting State to prescribe such substantive conditions of patentability as it desires.”
On January 1, 1995, the United States joined the World Trade Organization by entering the Marrakesh Agreement Establishing the World Trade Organization, which through Article II § 2 binds all of its members to the Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS“). 1867 U.N.T.S. 154, 33 I.L.M. 1144 (Apr. 15, 1994). The Agreement on TRIPS contains several provisions regarding the enforcement of patents. Article 41 § 1 of the Agreement on TRIPS specifies that each country “shall ensure that enforcement procedures as specified in this Part are available under their law so as to permit effective action against any act of infringement of intellectual property rights.” In addition, § 4 states that “[p]arties to a proceeding shall have an opportunity for review by a judicial authority of final administrative decisions and, subject to jurisdictional provisions in a Member‘s law concerning the importance of a case,” and § 5 states “[i]t is understood that this Part does not ... affect the capacity of Members to enforce their law in general.” See also id., art. 41-49. Like the Paris Convention, nothing in the PCT or the Agreement on TRIPS contemplates or allows one jurisdiction to adjudicate patents of another.8 Canada, France, Germany, and the United Kingdom, which are the foreign sovereigns concerned in this case, are parties to each of these treaties. See World Intellectual Property Organization, “States Party to the PCT and the Paris Convention and Members of the World Trade Organization” (2006), available at http://www.wipo.int/pct/en/texts/pdf/pct_paris_wto.pdf.
Voda asserts and one of the amicus curiae briefs suggests that these international treaties evince a trend of harmonization of patent law and thus, that allowing the
Based on the international treaties that the United States has joined and ratified as the “supreme law of the land,” a district court‘s exercise of supplemental jurisdiction could undermine the obligations of the United States under such treaties, which therefore constitute an exceptional circumstance to decline jurisdiction under
b. Comity and relations between sovereigns
“Comity refers to the spirit of cooperation in which a domestic tribunal approaches the resolution of cases touching the laws and interests of other sovereign states.” Société Nationale Industrielle Aérospatiale v. U.S. Dist. Court for the S.D. of Iowa, 482 U.S. 522, 543 n. 27, 107 S.Ct. 2542, 96 L.Ed.2d 461 (1987).
Comity, in the legal sense, is neither a matter of absоlute obligation, on the one hand, nor of mere courtesy and good will, upon the other. But it is the recognition which one nation allows within its territory to the legislative, executive or judicial acts of another nation, having due regard both to international duty and convenience, and to the rights of its own citizens or of other persons who are under the protection of its laws.
Id. (quoting Hilton v. Guyot, 159 U.S. 113, 163-64, 16 S.Ct. 139, 40 L.Ed. 95 (1895)) (quotation marks omitted) (emphasis added). Courts must also bear in mind that “whatever laws are carried into execution, within the limits of any government, are considered as having the same effect every where, so far as they do not occasion a prejudice to the rights of the other governments, or their citizens.” Id. (quoting Emory v. Grenough, 3 U.S. (3 Dall.) 369, 370, 1 L.Ed. 640 (1797) (quotation marks and citation omitted)) (emphasis added). Société provides us with these considerations to guide our determination of whether an exercise of comity supports extending or declining jurisdiction over the foreign patent infringement claims at issue here. See id. at 543-44 (stating that international comity concept
In this case, these considerations of comity do not support the district court‘s exercise of supplemental jurisdiction over Voda‘s foreign patent infringement claims. First, Voda has not identified any international duty, and we have found none, that would require our judicial system to adjudicate foreign patent infringement claims. As discussed supra Part III.A.2.a, while the United States has entered into the Paris Convention, the PCT, and the Agreement on TRIPS, nothing in those treaties contemplates or allows one jurisdiction to adjudicate the patents of another. Second, as discussed infra Part III.A.2.d, Voda has not shown that it would be more convenient for our courts to assume the supplemental jurisdiction at issue. Third, with respect to the rights of our citizens, Voda has not shown that foreign courts will inadequately protect his foreign patent rights. Indeed, we see no reason why American courts should supplant British, Canadian, French, or German courts in interpreting and enforcing British, Canadian, European, French, or German patents. Cf. Empagran, 124 S.Ct. at 2359 (finding no reason to allow “American [antitrust] law [to] supplant, for example, Canada‘s or Great Britain‘s or Japan‘s own determination about how best to protect Canadian or British or Japanese customers from anticompetitive conduct“).
Fourth, assuming jurisdiction over Voda‘s foreign patent infringement claims could prejudice the rights of the foreign governments. None of the parties or amicus curiae have demonstrated that the British, Canadian, French, or German governments are willing to have our courts exercise jurisdiction over infringement claims based on their patents. Cf.
In addition, the local action doctrine informs us that exercising supplemental jurisdiction in this case appears to violate our own norms of what sovereigns ordinarily expect. Courts derived the local action doctrine from the distinction between local and transitory actions beginning with Livingston v. Jefferson, 15 F. Cas. 660 (C.C.D.Va.1811), written by Justice John Marshall riding Circuit. In Livingston, the plaintiff sued in a Virginia court for trespass to land located in Louisiana. The court dismissed the action, holding that it could be brought only in a Louisiana court. The Supreme Court subsequently held that “an action for trespass upon land, like an action to recover the title or the possession of the land itself, is a local action, and can only be brought within the State in which the land lies.” Ellenwood v. Marietta Chair Co., 158 U.S. 105, 107, 15 S.Ct. 771, 39 L.Ed. 913 (1895). The Court concluded that a federal court sitting in another state had no jurisdiction to hear the trespass claim. Id. In short, the local action doctrine served to prevent courts from adjudicating claims for trespass or title to real property.
The territorial limits of the rights granted by patents are similar to those conferred by land grants. A patent right is limited by the metes and bounds of the jurisdictional territory that granted the right to exclude. See Dowagiac Mfg. Co. v. Minn. Moline Plow Co., 235 U.S. 641, 650, 35 S.Ct. 221, 59 L.Ed. 398 (1915) (“The right conferred by a patent under our law is confined to the United States and its territories.” (citation omitted)); NTP, Inc. v. Research In Motion, Ltd., 418 F.3d 1282, 1313 (Fed. Cir.2005) (“The territorial reach of section 271 is limited. Section 271(a) is only actionable against patent infringement that occurs within the
Therefore, the four considerations enunciated by the Supreme Court in Société demonstrate that extending our jurisdiction through
In addition, as a rule of statutory construction, the Supreme Court “ordinarily construes ambiguous statutes to avoid unreasonable interference with the sovereign authority of other nations.” Empagran, 124 S.Ct. at 2359; cf. Santa Clara Pueblo v. Martinez, 436 U.S. 49, 60, 98 S.Ct. 1670, 56 L.Ed.2d 106 (1978) (“[A] proper respect both for tribal sovereignty itself and for the plenary authority of Congress in [civil actions against tribal officers] cautions that we tread lightly in the absence of clear indications of legislative intent.“). As discussed, there is no explicit statutory direction indicating that the district courts should or may exercise supplemental jurisdiction over clаims arising under foreign patents, and the Paris Convention, PCT, and Agreement on TRIPS neither contemplate nor allow the extraterritorial jurisdiction of our courts to adjudicate patents of other sovereign nations. We have also noted the territorially limited nature of patent rights. See Pellegrini v. Analog Devices, Inc., 375 F.3d 1113, 1117 (Fed.Cir.2004) (“[As] the U.S. Supreme Court explained nearly 150 years ago in Brown v. Duchesne, 60 U.S. (19 How.) 183, 15 L.Ed. 595 (1857), the U.S. patent laws ‘do not, and were not intended to, operate beyond the limits of the United States.’ “); Rotec Indus., Inc. v. Mitsubishi Corp., 215 F.3d 1246, 1251 (Fed.Cir.2000) (” [T]he right conferred by a patent under our law is confined to the United States and its territories, and infringement of this right cannot be predicated on acts wholly done in a foreign country.” (quoting Dowagiac, 235 U.S. at 650)). Therefore, the principle that we should “avoid unreasonable interference with the sovereign authority of other nations” applies analogously here. Empagran, 124 S.Ct. at 2359.
We would risk such interference by exercising supplemental jurisdiction over Voda‘s foreign patent infringement claims. Patents and the laws that govern them are often described as complex. Indeed, one of the reasons cited for why Congress established our court was because it “felt that most judges didn‘t understand the patent system and how it worked.” Judge Pauline Newman, Origins of the Federal Circuit: The Role of Industry, 11 Fed. Cir. B.J. 541, 542 (2002). As such, Cordis U.S. and one of the amicus curiae assert, and Voda does not dispute, that the foreign sovereigns at issue in this case have established specific judges, resources, and procedures to “help assure the integrity and consistency of the application of their patent laws.” Therefore, exercising juris-
By analogy, Congress unified our patent jurisprudence by creating the Federal Circuit and granting exclusive jurisdiction of appeals on patent claims.
Accordingly, comity and the principle of avoiding unreasonable interference with the authority of other sovereigns dictate in this case that the district court decline the exercise supplemental jurisdiction under
c. Judicial economy
Because of our lack of institutional competence in the foreign patent regimes at issue in this case, more judicial resources could be consumed by the district court than the courts of the foreign patent grants. Indeed, adjudication of Voda‘s British, Canadian, European, French, and German patent claims may substantially predominate his U.S. patent claims. Cf.
In addition, the likelihood of jury confusion in applying different patent regimes could result in separate trials. Cf. Gibbs, 383 U.S. at 726 (“Finally, there may be reasons independent of jurisdictional considerations, such as the likelihood of jury confusion in treating divergent legal theories of relief, that would justify separating state and federal claims for trial,
Voda and one amicus curiae point out that consolidated multinational patent adjudication could be more efficient. While there may be merit in thаt argument, no international treaty establishes full faith and credit, nor have we found any analogous agreement that would require foreign countries to recognize or obligate the enforcement of our judgments regarding foreign patents. In this case, Voda‘s amended complaint asks not only for damages and fees but also for “such other and further relief as this Court deems just and proper.” Therefore, the additional time and resources required by our courts may result in incomplete adjudication of the claims, prolonging and extending the expenditures by all.
The district court did not articulate any such judicial economy analysis, and accordingly, this absence of analysis supports our finding that the district court abused its discretion in this case.
d. Convenience
Similarly, factors of convenience may provide additional reasons to decline exercising supplemental jurisdiction in this case. Again, the district court did not articulate any such analysis, further supporting our finding that it abused its discretion.
e. Fairness
Lastly, the act of state doctrine may make the exercise of supplemental jurisdiction over foreign patent infringement claims fundamentally unfair. As “a ‘principle of decision binding on federal and state courts alike,‘” the act of state doctrine “requires that, in the process of deciding, the acts of foreign sovereigns taken within their own jurisdictions shall be deemed valid.” W.S. Kirkpatrick & Co., Inc. v. Envtl. Tectonics Corp., Int‘l, 493 U.S. 400, 406, 110 S.Ct. 701, 107 L.Ed.2d 816 (1990) (citation omitted). In this case, none of the parties or amicus curiae have persuaded us that the grant of a patent by a sovereign is not an act of state. But see Mannington Mills, Inc. v. Congoleum Corp., 595 F.2d 1287, 1293-94 (3d Cir.1979) (stating that Third Circuit was “unable to accept the proposition that the mere issuance of patents by a foreign power constitutes [ ] an act of state” under abstention analysis). Therefore, assuming arguendo that the act of state doctrine applies, the doctrine would prevent our courts from inquiring into the validity of a foreign patent grant and require our courts to adjudicate patent claims regardless of validity or enforceability. Given the number of U.S. patent cases that we resolve on validity or enforceability as opposed to infringement grounds, exercising such jurisdiction could be fundamentally unfair to the alleged infringer where, as one amicus curiae points out, “the patent is in fact invalid and the defendant would be excused from liability on that basis in a foreign forum.” Voda has not shown in this case that the validity of the foreign patents would not be at issue. Indeed, Cordis U.S. asserts otherwise.
f. Section 1367(c) abuse of discretion
In summary, several reasons in this case would compel the district court to decline supplemental jurisdiction under
B. Alternate Statutory Basis
The parties also dispute on appeal whether diversity jurisdiction under
B. Abstention
The “district courts may be obligated not to decide” claims arising under foreign patents “where one of the abstention doctrines articulated by [the Supreme] Court applies.” Chicago, 522 U.S. at 174. Abstention doctrines “embody the general notion that federal courts may decline to exercise their jurisdiction, in otherwise exceptional circumstances, where denying a federal forum would clearly serve an important countervailing interest, for example where abstention is warranted by considerations of proper constitutional adjudication, regard for federal-state relations, or wise judicial administration.” Id. (quotation marks and citation omitted). Because we resolve the district court‘s jurisdiction on statutory grounds, we do not discuss or make any holdings regarding abstention here.
IV. CONCLUSION
We vacate the order of the district court granting Voda leave to amend his complaint to add infringement claims based on foreign patents pursuant to the supplemental jurisdiction statute
VACATED and REMANDED
No costs.
Dissenting opinion filed by Circuit Judge NEWMAN.
NEWMAN, Circuit Judge, dissenting.
I respectfully dissent, for the question here presented is not related to federalism and the federal/state relationship, or to pendent jurisdiction of state law issues; nor are disputes about foreign patents so unique as to call up the other theories collected by the panel majority to support this ousting of United States parties from access to United States courts. The certified question is concerned solely with the authority of a United States court, having personal jurisdiction of the parties, to exercise its discretion to accept the amended complaint concerning the foreign patents corresponding to the United States patent
A foreign country is not a “state” in the constitutional context, and the judicial application of foreign law plays no role in the jurisdictional balance represented by federalism. The rules governing federal jurisdiction of supplemental state claims are irrelevant to whether a United States court has the authority and can exercise its discretion to decide questions that require the application of foreign law. Courts in the United States have always had the authority to decide questions that require application of foreign law.
The district court had agreed to receive the amended complaint. Our role, at this pleading stage, is to determine whether that action is supportable. My colleagues hold that the district court abused its discretion in exercising supplemental jurisdiction of the foreign patent issues, indeed holding that the district court has no discretion to accept this amended complaint because it involves foreign patents. I cannot agree. It is inappropriate for the Federal Circuit to create this unique exception to the authority of American courts to resolve controversies that require the application of foreign law.
Access of a nation‘s citizenry to dispute resolution in the nation‘s courts is fundamental to a nation ruled by law. This court‘s new rule carves an inapt exception into judicial authority, judicial obligation, and judicial discretion. Such special treatment of patent issues is flawed as a matter of precedent, procedure, and policy.
Courts Routinely Apply Foreign Law
Precedent illustrates myriad situations in which the courts have determined and applied foreign law, and also illustrates those few situations in which a court has declined to resolve a specific foreign-based issue. Today‘s extreme barrier to exercise of the district court‘s discretion when foreign patents are involved stands alone among the vast variety of causes in which such determinations have been made.
United States courts have determined and applied foreign commercial law, foreign property law, foreign inheritance law, foreign citizenship law, foreign copyright law, foreign trademark law, foreign liability and negligence law, and other foreign law as appropriate to resolution of the dispute between the parties before the court. The principle is that a court should apply the same law that would be applied
A sampling of recent cases yields further illustration of judicial authority and dispute-resolution obligation when foreign law is involved: In Cambridge Literary Properties, Ltd. v. W. Goebel Porzellanfabrik G.m.b.H. & Co., 295 F.3d 59 (1st Cir. 2002) the court observed that the district court may apply United States copyright law, German contract law, and Austrian inheritance law, to resolve all of the issues in the casе. In Abogados v. AT & T, Inc., 223 F.3d 932 (9th Cir. 2000) the court applied California choice of law analysis to hold that the law of Jalisco, Mexico should be applied by the district court to an issue of tortious interference with a contract made in Mexico between the Mexican plaintiffs and the Mexican subsidiary of AT & T. In Tschira v. Willingham, 135 F.3d 1077 (6th Cir. 1998) the court applied German law to decide whether a letter created a fiduciary duty, and then applied Tennessee law to a fraudulent misrepresentation concerning property in Tennessee. In Curley v. AMR Corp., 153 F.3d 5, 12 (2nd Cir. 1998) the court compared the laws of Mexico and New York as to various torts including false imprisonment and negligence, and stated its “agreement with the concept that appellate courts, as well as trial courts, may find and apply foreign law“; the court held that foreign law should be applied to the acts that occurred in Mexico unless “violative of fundamental notions of justice and prevailing concepts of good morals.” See generally 9 Charles Alan Wright and Arthur R. Miller, Federal Practice and Procedure §§ 2444-446 at 644-58 (2d ed.1995) (discussing application of foreign law in federal courts).
In Dorman v. Emerson Electric Co., 23 F.3d 1354 (8th Cir. 1994) the court applied the “most significant relationship” test to determine that Canadian law applied to a personal injury claim against a product that was designed in Missouri, manufactured in Taiwan, and sold and used in Canada. In Indasu Int‘l, C.A., v. Citibank, N.A., 861 F.2d 375, 379 (2nd Cir. 1988) the court determined the applicable Ecuadorian law of contracts and guaranty, then applied that law to the obligation between the United States guarantor and a Panamanian corporation as to a contract to be performed in Ecuadorian waters. In Mathews v. ABC Television, Inc., 776 F.Supp. 821 (S.D.N.Y. 1991) a Kenyan filmmaker sued ABC Television in New York for injuries by a rhinoceros in Kenya, alleging that an ABC employee‘s reckless conduct caused the attack; the district court applied the Kenyan comparative negligence law and case law of the East Afri
As for cases involving foreign patents, in Ortman v. Stanray, 371 F.2d 154 (7th Cir. 1967) the court approved the exercise of supplemental jurisdiction of counts concerning the corresponding Canadian, Brazilian, and Mexican patents. In Mars, Inc. v. Kabushiki-Kaisha Nippon Conlux, 24 F.3d 1368 (Fed. Cir. 1994), this court declined to decide the Japanese patent issues, explaining that the accused devices, the scope and class of the claims, and the charges of infringement were different in Japan and the United States. In Medigene AG v. Loyola Univ. of Chicago, No. 98 C 2026, 2001 WL 1636916 (N.D. Ill. Dec. 19, 2001) the district court declined to dismiss the issue of inventorship of foreign patent applications, stating that ”[Mars] makes clear that in appropriate circumstances Section 1367 permits exercise of supplemental jurisdiction over a claim for infringement of a foreign patent.” Id. at *1. In Forbo-Giubiasco S.A. v. Congoleum Corp., 516 F.Supp. 1210 (S.D.N.Y. 1981), the court observed that “[a] finding against Congoleum on this point [inequitable conduct in obtaining the foreign patents] would affect only the rights between Congoleum and Giubiasco, not Congoleum‘s foreign patent rights generally.” Id. at 1218. In Distillers Co. v. Standard Oil Co., 150 USPQ 42 (N.D. Ohio 1964), in a dispute involving various patents on the manufacture of acrylonitrile, the court stated that “It cannot be doubted, nor does the plaintiff question, that this Court is empowered to consider claims arising under foreign patents.” Id. (citing Aluminum Co. of Am. v. Sperry Products, Inc., 285 F.2d 911 (6th Cir. 1960) and Nat‘l Latex Products Co. v. Sun Rubber Co., 274 F.2d 224 (6th Cir. 1960)).
In no case did the court hold that it had no power or authority to receive the foreign issue, reciting various reasons in a few situations where the cоurt declined the foreign issue. An example is Bonzel v. Pfizer, Inc., 439 F.3d 1358 (Fed. Cir. 2006), where this court sustained the district court‘s discretion in dismissing, on the ground of forum non conveniens, an action that required application of German contract law to interpret a patent license agreement that was made in Germany between a German national and the Swiss subsidiary of a United States company. Other cases are: Vanity Fair Mills, Inc. v. T. Eaton Co., 234 F.2d 633, 645 (2nd Cir. 1956) (“the district court did not abuse its discretion in declining to exercise its jurisdiction over that portion of the case arising in Canada and governed by Canadian trade-mark law“); Torah Soft Ltd. v. Drosnin, 136 F.Supp.2d 276 (S.D.N.Y. 2001) (district court declined to exercise jurisdiction over foreign copyright claims because the United States copyright claim had been dismissed); Berkshire Furniture Co. v. Glattstein, 921 F.Supp. 1559, 1562 (W.D. Ky. 1995) (district court stated that on principles of international comity it was “disinclined to decide issues related to the
The district court herein, in exercising its discretion to accept the Voda amended complaint, explained that the factual situation in Ortman, supra, was more akin to this case than the factual situation in Mars, supra. In Ortman the court had accepted the foreign patent issues, stating that “all of the actions of defendant of which complaint is made are the result of defendant doing similar acts both in and out of the United States,” 371 F.2d at 158, whereas in Mars, citing the differences in the patents and the products this court held that the Japanese issues would more appropriately be resolved by a Japanese court. In contrast to the case-specific analyses in precedent, my colleagues now hold that it would always be an abuse оf discretion for the district court to decide foreign patent issues, unless some sort of new treaty is produced. However, it is inappropriate to compel the district court to decline the adjudicative authority available in all other areas of law.
In explaining this unique inroad on discretion when foreign patents are involved, my colleagues rely heavily on the criteria of supplemental jurisdiction as codified in
Judicial authority to decide questions of foreign law is not a matter of the federal/state relationship codified at
The principles of supplemental jurisdiction as applied to federal/state issues,
§ 1367(a) . Except as provided in subsections (b) and (c) or as expressly provided otherwise by Federal statute, in any civil action of which the district courts have original jurisdiction, the district courts shall have supplemental jurisdiction over all other claims that are so related to claims within such оriginal jurisdiction that they form part of the same case or controversy under Article III of the United States Constitution....
A district court may decline to exercise supplemental jurisdiction over such a related claim:
§ 1367(c) . The district courts may decline to exercise supplemental jurisdiction over a claim under subsection (a) if—
- the claim raises a novel or complex issue of State law,
- the claim substantially predominates over the claim or claims over which the district court has original jurisdiction,
- the district court has dismissed all claims over which it has original jurisdiction, or
- in exceptional circumstances, there are other compelling reasons for declining jurisdiction.
(All emphases added). Although my colleagues fault the district court for “not making a Section 1367(c) analysis,” this is an inapt criticism, for the district court did not decline jurisdiction by invoking
The court‘s ruling today essentially eliminates this discretionary option in foreign patent cases; the court makes no mention of the common nucleus of operative facts among Voda‘s United States and foreign patent issues, and does not review the district court‘s ruling on the ground of abuse of discretion. In eBay Inc. v. MercExchange L.L.C., — U.S. —, 126 S.Ct. 1837, 164 L.Ed.2d 641 (2006) the Court discouraged the carving out of an exception uniquely for patent cases, and required that the equitable discretion of the district court be as available in patent cases as in other cases. The panel majority strays from precedent, policy, and prudence, in ruling that the discretionary authority of the district court cannot or should not be exercised to resolve foreign patent disputes between parties properly before the court. My colleagues’ reliance on the rules of supplemental jurisdiction does not support their restraint on this exercise of discretion.
I respond to the several other justifications offered in the majority opinion, for they also are flawed:
The Facts as Pled Support the District Court‘s Action
The district court followed the Seventh Circuit‘s decision in Ortman, the closest precedent. The commonality of issues in the five countries of the Voda patents, including the United States, was before the district court. The accused catheter is the same in all five countries; it is manufactured by Cordis Corporation in a single plant, initially at Miami Lakes, Florida and now in Mexico. Cordis manages the Mexican plant and arranges for shipment to the Cordis companies in the five countries where infringement is charged, viz., Cordis Corporation (US), Cordis S.A. (France), Cordis G.m.b.H (Germany), Cordis UK Limited, and Cordis in Canada. All of the Cordis companies are related to the Johnson & Johnson Company.
The patents in the five countries show that they are of common origin. A PCT (Patent Cooperation Treaty) application, based on the United States application, was filed in the Canadian and European Patent Offices. All of the patents have identical drawings, and the specifications are the same with additional text in the United States. The European patent application was filed and prosecuted in En
Cordis says in its brief that there are differences among the patents, although no details were provided and differences are not apparent. But accepting this statement, I doubt that any differences are beyond the understanding of a United States court, with appropriate explanation if needed. Cordis also says that it intends to challenge the validity of all of the patents based on a reference that was not cited in any examination; it is not explained why a new reference cannot be considered as to not only the United States patent, but the foreign patents.
My colleagues, supporting their ruling that the district court should not and can not in its discretion accept cases that raise issues of foreign patent validity and infringement, state that “more judicial resources could be consumed by the district court than the courts of the foreign patent grants.” Maj. Op. at 903. This reason is unsupported by the pleaded facts. Nor should a court ignore the consumption of private as well as judicial resources in duplicative litigation between the same parties in five countries, in three languages, with five sets of lawyers and the other trappings and burdens of trial.
My colleagues unfairly criticize the district court for not making any findings regarding the differences between the domestic and foreign patents, and equally unfairly criticize the absence of expert analysis of the foreign patent laws. It is surely inappropriate to criticize the judge for not making findings or taking evidence at the pleading stage. On a motion to amend the pleadings the court shall accept the well-pled allegations,
Discretionary authority is of broad scope, as is the judicial obligation to resolve disputes between litigants who are properly before the court. The district court‘s action reflects the “balance of conveniences,” Piper Aircraft Co. v. Reyno, 454 U.S. 235, 255 n. 23, 102 S.Ct. 252, 70 L.Ed.2d 419 (1981), for the court could have considered the convenience to Dr. Voda, a citizen of Oklahoma, and balanced it against the convenience of multiple litigation in foreign countries. Cordis does not argue that it would be more “convenient” for it to litigate in five countries instead of one.
Although a district court may decline to exercise its jurisdiction when it appears that the convenience of the parties and the court and the interests of justice are such that the action should be tried in another forum, id. at 249-50, 102 S.Ct. 252, this determination is committed to the sound discretion of the district court. See, e.g., Leetsch v. Freedman, 260 F.3d 1100, 1102–03 (9th Cir. 2001) (“When we review a forum non conveniens determination, we give less deference to a foreign plaintiff‘s choice of a United States forum than to a domestic plaintiff‘s choice” and “[w]hether to dismiss an action on forum non conveniens grounds require the district court to consider the availability of an adequate alternative forum, and then to consider whether several ‘private’ and ‘public’ interest factors favors dismissal.“). Cordis has the burden of persuasion that the district court abused its discretion in choosing to
Complexity of Law or Fact
I turn to the matter of complexity, for this aspect is also pressed in the panel majority‘s reasoning. My colleagues propose that in view of the complexities that may arise in connection with foreign patents, United States courts should not or can not exercise their discretion to enter the arena. Such a sweeping elimination of judicial authority contravenes the fundamentals of judicial responsibility, for judges cannot avoid cases because they may be complex. The complexity of patent law does not evict the district court from its discretionary authority.
My colleagues appear to believe that each nation‘s patent on Dr. Voda‘s invention covers a different scope of subject matter. The proposition that the scope of counterpart patents, particularly those having identical claims, will usually vary significantly will come as a surprise and shock to the holders of literally millions of counterpart patents. In this case all five patents are of common origin and text, and the patents in Great Britain, France, and Germany are identical as granted by the European Patent Office. It is well recognized that most inventions receive consistent protection under the patent laws of the major industrial nations. The few ar
There is no assertion that the Voda catheter is so complicated as to test the nuances of comprehension and law. The panel majority states that its concern about “construing” different claims or even the same claims in different countries, and that expert testimony might be required. Expert testimony is not unusual in patent litigation, and experts on the meaning and scope of the claims in these countries are undoubtedly available if needed. See
“The parties, therefore, carry the burden of proving foreign law; where they do not do so, we ‘will ordinarily apply the forum‘s law.‘” Ferrostaal, Inc. v. M/V Sea Phoenix, 447 F.3d 212, 216 (3rd Cir. 2006) (quoting Bel-Ray v. Chemrite Ltd., 181 F.3d 435, 440 (3d Cir. 1999)); Banco de Credito Industrial, S.A. v. Tesoreria Gen., 990 F.2d 827, 836 (5th Cir. 1993) (analyzing Spanish and French law and holding that “[w]hen the parties have failed to conclusively establish foreign law, a court is entitled to look to its own forum‘s law in order to fill in any gaps.“).
We do not know whether the accused Cordis device is a simple copy of the Voda invention or whether it embodies significant changes; that is, we do not know whether claim “construction,” under any
My colleagues also express concern about “jury confusion” when proving infringement of patents written in other languages and under foreign law. I take note that the
The panel majority also states its concern that issues of foreign patents may not be correctly decided by a United States court. Undoubtedly this concern fits all of the areas in which courts have applied foreign law, and could be a factor in a district court‘s determination of whether to exercise jurisdiction in a particular case. However, such a discretionary determination is quite different from the panel majority‘s ruling that discretion should not be exercised to accеpt and decide foreign patent issues.
My colleagues propose that permitting exercise of the district court‘s discretion to accept jurisdiction “could be fundamentally unfair to the alleged infringer.” Indeed, fairness is an important aspect of discretionary rulings, and fairness to both sides must be considered. The panel majority does not explain its apparent balance of fairness in its holding that the alleged infringer is always more disadvantaged and can only be sued in the situs of the infringement. Such considerations would have evicted American courts in many areas of law, as in the representative cases cited earlier in this opinion. This concern does not warrant treating patent cases differently from all other causes of action.
In this case, the district court was willing to take on the foreign issues. Perhaps the district court gave weight to the fact that the United States patent was being litigated anyway, on the same grounds and against the same device that is at issue in all five countries. Perhaps the court gave weight to equitable considerations, for they are always relevant to judicial discretion. None of the aspects here raised supports departing from the authority of courts to resolve disputes between parties that are properly before them, whether or not foreign law is involved. The fundamental question now presented is whether a district court will be permitted to retain its judicial authority, or will this specific area be uniquely limited, whatever the position of the district court as to its discretion and its obligation.
The Local Action Doctrine
My colleagues also refer to the “local action” doctrine as barring the district court‘s jurisdiction of foreign patent issues. This “doctrine” arose in United States jurisprudence in the early days of the Re
The Act of State Doctrine
The panel majority also invokes the “Act of State” doctrine as justification for barring the district court from choosing to decide the issues of Voda‘s foreign patents. The theory appears to be that the grant of a foreign patent is a governmental act of state, and thereby untouchable by a United States court. Thus the panel majority proposes that the district court‘s discretionary act would “prejudice the rights of other governments” to decide the validity and enforceability of their patents. That proposition is unsupported. In Mannington Mills, Inc. v. Congoleum Corp., 595 F.2d 1287, 1293-94 (3rd Cir. 1979) the court rejected the theory that “the mere issuance of patents by a foreign power constitutes either an act of state, as that term has developed under case law, or an example of governments’ compulsion.” In Forbo-Giubiasco, 516 F.Supp. at 1217 the court explained that “it cannot be said that a determination by an American court that a private company failed to present relevant information to a foreign patent office could interfere with our government‘s conduct of foreign affairs.”
In Banco Nacional de Cuba v. Sabbatino, 376 U.S. 398, 84 S.Ct. 923, 11 L.Ed.2d 804 (1964) the Court explained that “[t]he act of state doctrine in its traditional formulation precludes the cоurts of this country from inquiring into the validity of the public acts a recognized foreign sovereign power committed within its own territory,” and that the doctrine precludes judicial determination of the legality of acts of foreign states within their own territories which might embarrass the executive department in its conduct of foreign affairs. Id. at 427-49, 84 S.Ct. 923. Not every governmental action is an act of state, and not every ministerial activity carries the political and international implications of that usage.
Whether a particular governmental action is properly viewed as an act of state has been explained in a variety of contexts; the common thread is whether the issue is one that is normally consigned to the executive branches, such that an international dispute is resolved by political negotiations between diplomats; or whether the issue is more suitable to the individual review that is given to litigants in judicial proceedings dealing with specific facts. See generally 12 A.L.R. Fed. 707 (1972) (“Modern Status of the Act of State Doctrine“). The fundamental criterion is whether the governmental action is a significant public act or whether it is a ministerial function, accompanied by whether the proposed judicial review is directed to the public interests of the nation as served by the governmental act, or is a private effort to enforce a private claim.
Clearly, the grant of a patent is not an Act of State, whether done by the United States or by a foreign country. No support has been offered for so creative an
Enforcement Is Not An Issue
There is no issue raised by either party concerning enforcement by a foreign court of the district court‘s potential decision concerning any of the Voda foreign patents. This case does not raise issues of comity, treaty, and diplomacy, when judgments are sought to be enforced in another country. The complexities of enforcement of foreign judgments, at which my colleagues hint, indeed serve to protect litigants from abusive procedures, and under the various protocols and treaties that relate to foreign judgments, a foreign court can refuse to accept a decision of another nation‘s tribunal. See Laker Airways Ltd. v. Sabena, Belgian World Airlines, 731 F.2d 909, 937-38 (D.C. Cir. 1984) (“No nation is under an unremitting obligation to enforce foreign interests which are fundamentally prejudicial to those of the domestic forum.“); Motorola Credit Corp. v. Uzan, 388 F.3d 39, 60 (2d Cir. 2004) (“orders of foreign courts are not entitled to comity if the litigants who procure them have ‘deliberately courted legal impediments’ to the enforcement of a federal court‘s orders“) (citation omitted); Finanz AG Zurich v. Banco Economico S.A., 192 F.3d 240, 246 (2d Cir. 1999) (judicial proceedings may receive comity to the extent that the “foreign court had proper jurisdiction and enforcement does not prejudice rights of United States citizens or violate domestic public policy“). See generally Restatement (Third) of Foreign Relations Law of the United States §§ 481-82 (1987) (recognition and enforcement of foreign judgments and grounds for non-recognition of such judgments).
The enforcement aspect was not raised by either party. The district court may have recognized that both Dr. Voda and Cordis Corporation, the manufacturer for all five countries, are within the district court‘s personal jurisdiction. In Forbo-Giubiasco, supra, the court explained that its findings with respect to the foreign patents were directed to the obligations of the parties to each other, and not to whether or how a foreign tribunal would view the decision.
The issues and relationships herein reinforce the district court‘s exercise of discretion to accept the amended complaint, and further impugns this court‘s withdrawal of the district court‘s discretion as to foreign patents. There is no sound reason why speculative concerns of enforcement in foreign countries warrant depriving the district court of its discretion to resolve this dispute between these United States parties. While we do not know the extent to which the district court might find liability and impose constraints in this case, the answer to this dispute is not to bar the court from hearing it.
The Role of Patent Treaties
The panel majority proposes that it would violate the Paris Convention for the Protection of Industrial Property, the Patent Cooperation Treaty, and the TRIPS Agreement of the World Trade Organization, if the United States were to consider the validity and infringement of Dr. Voda‘s foreign patents. None of these treaties prohibits resolution by a national court of private disputes that include foreign patent rights. The question is not as present-
Dispute Resolution is an Obligation of Courts
The ruling of the panel majority departs not only from judicial precedent, but from judicial obligation. Although the court appears to concede that the district court may have “jurisdiction” to resolve the foreign aspects of this dispute, my colleagues hold that this authority cannot be exercised to resolve this dispute. This holding contravenes the judicial role. The district court has both the power and the obligation to resolve the dispute between the parties. See Cheney v. U.S. District Court for the District of Columbia, 542 U.S. 367, 370, 124 S.Ct. 2576, 159 L.Ed.2d 459 (2004) (referring to the district court‘s constitutional responsibility to resolve cases and controversies within its jurisdiction); Kirkpatrick & Co. v. Envt‘l Tectonics Corp. Int‘l, 493 U.S. 400, 409, 110 S.Ct. 701, 107 L.Ed.2d 816 (1990) (“Courts in the United States have the power, and ordinarily the obligation, to decide cases and controversies properly presented to them.“).
The majority postulates that discretion perhaps could be exercised “especially if circumstances change, such as if the United States were to enter into a new international patent treaty or if events during litigation alter a district court‘s conclusion regarding comity, judicial economy, convenience, or fairness.” This is at best a confusing wrap-up to this important question, for no new international treaty is at hand, and the proposal that events during litigation may change the conclusion is not helpful, for the question is whether this litigation will be conducted at all.
The question here is simply whether, in a dispute between United States entities of whom the district court has personal jurisdiction, does the court have discretion to resolve aspects that concern foreign patents. The panel majority‘s conclusion that the court cannot exercise its discretion to do so is contrary to principle, practice, and judicial obligation.
Comity, Harmonization, and the Future
Comity is a complex concept of international law, and its generalization to evict United States courts from their dispute-resolution obligation is not supported on any theory of comity. See Hilton v. Guyot, 159 U.S. 113, 164, 16 S.Ct. 139, 40 L.Ed. 95 (1895) (defining comity as “neither of absolute obligation ... nor of mere courtesy and good will” but “the recognition which one nation allows within its territory to the legislative, executive or judicial acts of another nation, having due regard both the international duty and convenience, and to the rights of its own citizens ... who are under the protection of its laws.“). Comity has no relevance to the need to apply foreign law and the obligation and authority to meet that need. In Piper Aircraft, 454 U.S. at 260 n. 29, 102 S.Ct. 252, the Court observed that “[t]he need to apply foreign law ... alone is not sufficient to warrant dismissal when a balancing of all relevant factors shows that the plaintiff‘s chosen forum is appropriate.”
The panel majority raises the specter that foreign courts might adjudicate United States patent rights, proposing that if our courts are permitted to decide questions under foreign patent law, other countries will feel free to decide questions of United States patent law. Cordis too sounds the alarm, stating that creative litigants will choose exotic foreign forums to
Proponents of patent “harmonization” point to the similarity of the policies that underlie patent law of all industrialized nations, and stress that for most technologies the same scope of practical protection is available to industrial development in all nations. It would be anomalous indeed for the United States now to rule that the courts cannot understand patent principles as applied in other nations.
Preclusion and prejudgment are inappropriate and unnecessary. From my colleagues’ extreme limitation and bar on the district court‘s exercise of discretion to receive and resolve foreign patent issues, I respectfully dissent.
The LONG ISLAND SAVINGS BANK, FSB, and the Long Island Savings Bank of Centereach FSB, Plaintiffs-Appellees,
v.
UNITED STATES, Defendant-Appellant.
No. 2006-5029.
United States Court of Appeals, Federal Circuit.
Feb. 1, 2007.