Litigation Beyond the Technological Frontier: Voda v. Cordis and Claims of Foreign Patent Infringement
[Jay Thomas is a professor at Georgetown University Law Center where he teaches, among other things, international intellectual property law.]
The U.S. Court of Appeals for the Federal Circuit recently held that a U.S. district court did not possess subject matter jurisdiction over assertions of foreign patent infringement. In Voda v. Coris Corp., the Federal Circuit rejected the district court’s preliminary exercise of supplemental jurisdiction over foreign patent claims, concluding that exercising such jurisdiction constituted an abuse of discretion under 28 U.S.C. § 1367(c). Because the court of appeals did not speak to diversity jurisdiction, and also left open the possibility that supplemental jurisdiction may be available under differing, unspecified circumstances, Voda v. Cordis appears to raise as many questions as it answered.
The case concerned several patents owned by Dr. Jan Voda, an Oklahoma-based cardiologist who invented an improved catheter useful for coronary angioplasty. Believing that Cordis Corp., the Florida-based medical device arm of Johnson & Johnson, infringed his U.S. patents, Voda brought suit in the Western District of Oklahoma. Voda ultimately obtained a multi-million dollar damages award from the trial court based upon the willful infringement of Cordis. Prior to receiving this judgment, however, Voda also sought to amend his complaint to assert patents on the same invention that he had procured in Britain, Canada, France, and Germany.
Voda’s claims of infringement overseas arose in a world that lacks a unified patent system. Inventors instead must procure patents on a national basis. Once granted, patents have for the most part been enforced through parallel infringement suits in different national courts. Voda asserted not only that the district court possessed authority to hear the cases on a consolidated basis, but that doing so would be fair and efficient for both litigants. The district court agreed with Voda and concluded that it possessed supplemental jurisdiction over his foreign patent claims. But it also certified an interlocutory appeal. The Federal Circuit subsequently overturned the lower court in a 2-1 decision.
Writing for the majority, Judge Gajarsa concluded that the district court abused its discretion. The court of appeals turned first to a leading international agreement concerning patents, the Paris Convention for the Protection of Industrial Property. Although the majority observed that the Paris Convention contained no express provision allocating jurisdiction to hear patent infringement claims, the court nonetheless inferred a principle that one jurisdiction should not adjudicate the patents of another. Analogizing patents to land grants, the majority also relied upon the local action doctrine to conclude that assertion of foreign patent infringement claims would be inappropriate. Further doubting that consolidated multinational patent litigation would be more convenient to the litigants, and expressing concern that such adjudication would interfere with the authority of over sovereigns, the Federal Circuit vacated the order allowing Voda leave to amend his complaint.
Judge Newman responded with a well-reasoned dissent that exposed numerous weaknesses in the majority’s reasoning. Courts routinely apply foreign law, she observed, and all nations have recognized their obligation to provide a judicial forum to address disputes involving their citizens. Further, courts from other nations have adjudicated claims of foreign patent infringement–for example, a Japanese court recently adjudicated infringement assertions with respect to a U.S. patent. Distinguishing patents from the application of the local action doctrine, Judge Newman also found no treaty that prohibited one national court from resolving private disputes that involve foreign patent rights. She further appreciated that each of Voda’s patents pertained to the same invention, a mechanical device, that did not raise novel issues based upon a nascent, evolving technological field. Judge Newman finally explained that the concerns that animated the act of state doctrine were simply inapposite to patent cases, which present legal and commercial issues, not ones of sovereign authority.
Voda v. Cordis represents a lost opportunity for the Federal Circuit to ameliorate the burdens of costly, piecemeal patent litigation faced by innovators and the world’s judicial systems alike. The majority’s holding is more narrow than may be initially apparent, however. The majority stressed that jurisdiction under § 1367(c) is an area of discretion, and that different results might obtain “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 conclusions regarding comity, judicial economy, convenience, or fairness.” Further, because Voda had not pleaded diversity jurisdiction, the Federal Circuit declined to address this additional possibility for pursuing claims of foreign patent infringement in U.S. courts. For now, innovative industries should recognize that although technology knows no borders, the extent of federal jurisdiction over multinational patent disputes may indeed be constrained by courts uncomfortable with the prospect of adjudicating such cases.