The U.S. Court of Appeals for the Federal Circuit affirmed the dismissal of a foreign inventor’s foreign law license on the grounds of lack of jurisdiction and forum non conveniens. Bonzel v. Pfizer, Inc., Case No. 05-1114 (Fed. Cir. Mar. 2, 2006) (Newman, P.).

The plaintiff, Dr. Bonzel, a German citizen residing in Germany, is the named inventor in various patents directed to catheters for use in conjunction with the insertion of stents (which keep coronary arteries open after they have been unblocked) and for use in coronary angioplasty. Dr. Bonzel negotiated a license agreement with Schneider AG, a subsidiary of Pfizer, Inc. The license agreement granted an exclusive worldwide license to Dr. Bonzel’s patent. The agreement was written in German and was to be construed according to German law. The section of the license agreement at issue required notification to Dr. Bonzel of any infringements that Pfizer discovered and also required a portion of the recovery in an infringement action to be paid to Dr. Bonzel. Dr. Bonzel contended the sale of the Schneider companies to Boston Scientific Corp. was part of an infringement settlement, and under the license agreement, he was entitled to a portion of the proceeds from the sale.

Dr. Bonzel originally filed suit in Minnesota state court. The case moved to the federal district court but later remanded based on Dr. Bonzel’s argument that he was merely seeking contract enforcement and remedy for its breach. The state court dismissed the action for forum non conveniens with leave for Dr. Bonzel to refile in Germany. The state court also provided that the forum would be available if Dr. Bonzel could not obtain jurisdiction in Germany. The Minnesota Court of Appeals affirmed the decision.

Seemingly undaunted by the adverse venue determination, Dr. Bonzel tried again to have this action tried by a U.S. court. Dr. Bonzel filed a new action in the District Court of Minnesota alleging issues of patent infringement with the breach of contract claim. The district court also dismissed the case for forum non conveniens for essentially the same reasons as the Minnesota state court. Dr. Bonzel appealed.

The Federal Circuit affirmed, concluding that the district court acted within its discretion. Specifically, the Federal Circuit affirmed that the relevant portions of the complaint were based in contract, not patent law, despite Dr. Bonzel’s references to patent infringement in the second filed case. The Federal Circuit noted that contract obligations do not "arise under" patent law merely because the contract is a patent license agreement. The Federal Circuit agreed with both the Minnesota state court and the district court and found that a contract negotiated and created in Germany and interpreted under German law is best litigated in German courts.

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