The U.S. Court of Appeals for the Federal Circuit, in a rare interlocutory appeal, found the district court lacked supplemental jurisdiction under 35 U.S.C. §1367 to entertain a claim for infringement of a foreign patent. After the patent owner brought suit for infringement of its U.S. patent, it moved for and was granted leave to amend to add allegations of infringement of related foreign patents. The Federal Circuit held that the district court abused its discretion in granting leave to amend. Voda v. Cordis Corp., Case No. 05-1238 (Fed. Cir., Feb. 1, 2007) (Gajarsa, J.; Newman, J., dissenting).
Voda obtained three U.S. patents from a common specification as well as four foreign patents that issued off of the corresponding Patent Cooperation Treaty (PCT) application. After bringing suit against Cordis for infringement of the three U.S. patents, Voda sought to amend its complaint to assert infringement of the four foreign patents. Voda did not add the foreign affiliates that were alleged to be infringing the foreign patents abroad. Cordis opposed the attempted amended on the grounds that the district court lacked subject matter jurisdiction under §1367(a) and (c). The district court, relying largely on Mars v. Kabushiki-Kaisha Nippon Conlux, granted Voda’s motion. Cordis sought relief by way of interlocutory appeal to the Federal Circuit.
The Federal Circuit first noted that exercise of supplemental jurisdiction to hear a claim for infringement of a foreign patent is unique to U.S. patent law and is thus governed by the law of the Federal Circuit. The Court then noted that the four factors set forth in Mars (difference in patents, differences in accused devices, difference in accused acts and differences in governing laws) do not supplant the "common nucleus of operative facts" test established by the Supreme Court. The district court’s failure to articulate its findings on all of the Mars factors and the Federal Circuit’s ability to entertain expert testimony at the appellate level, resulted in the Court not deciding the "common nucleus if operative fact" question. The Court noted that the district court’s opinion contained no §1367(a) analysis and that "considerations of comity, judicial economy, convenience, fairness, and other exceptional circumstances constitute compelling reasons to decline jurisdiction under §1367(c)…."
Judge Newman’s dissent took issue with the district court’s refusal to exercise jurisdiction simply because foreign law is implicated, noting the myriad of cases routinely resolved by U.S. federal courts that implicate foreign law. Judge Newman noted that 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."
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