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Patent Law Commentary
Voda v. Cordis Undermines Court's Authority to Take Cognizance of Foreign Patent Infringement Claims
Voda v. Cordis Corp.
Posted: 07/13/2007
By: Thomas F. Zuber, Esq.
Introduction
Despite what it called a "harmonizing trend" among the world's patent courts, the Federal Circuit chose not to create a more unified global system of enforcing patents worldwide. Instead, the court effectively eliminated a district court's ability to assert supplemental jurisdiction over claims of foreign patent infringement, forcing patent holders to seek enforcement in parallel suits in courts all over the world.
Detailed Commentary
BACKGROUND
The patents at issue in this case relate generally to guiding catheters used in cardiology. Dr. Voda first sued Cordis U.S. in the United States District Court for the Western District of Oklahoma, where he is a resident, alleging infringement of his three U.S. patents. He then moved to amend his complaint to add infringement claims on the British, Canadian, European, French and German patents. Only Cordis U.S., incorporated in Florida, was named as defendant; none of its foreign affiliates is a party. The catheter is the same in all five countries. It is manufactured in a single plant, initially in Miami Lakes, Florida and now in Juarez, Mexico, and then shipped to the five countries where infringement is charged. The patents are of common origin and have identical drawings, though Cordis alleges there are differences among the patents.
The district court exercised its discretion pursuant to 28 U.S.C. Section 1367 (a), determining that it had supplemental jurisdiction over the foreign patent claims. The court therefore granted Voda’s motion to file the amended complaint, and Cordis U.S. appealed. The Federal Circuit held that the district court abused its discretion.
A DISTRICT COURT MAY NOT EXERCISE SUPPLEMENTAL SUBJECT-MATTER JURISDICTION OVER FOREIGN PATENT CLAIMS
The panel reasoned that issues of comity, judicial economy, convenience and fairness dictated declining jurisdiction pursuant to subsection (c). The panel noted that it would refrain from examining the “same case or controversy” requirements of subsection (a)—the section on which the district court premised its holding—because it believed the court abused its discretion under subsection (c).
Exercising Supplemental Jurisdiction Would Undermine US Treaties
First, the panel held that a district court’s exercise of supplemental jurisdiction over foreign patent infringement claims would “undermine the obligations of the United States” under various treaties, such as the Paris Convention, the Patent Cooperation Treaty and TRIPS. Noting that none of these treaties contemplates allowing one nation to adjudicate the patents of another and that there is no international duty to do so, the court further maintained that permitting the exercise of supplemental jurisdiction risks prejudicing the rights of foreign governments and interfering with their sovereign authority. More importantly, it seems, the court expressed concern that those foreign courts would then begin interpreting U.S. patents, potentially wreaking havoc with the uniformity of United States patent law.
Exercising Supplemental Jurisdiction Would Waste Judicial Resources
The court next discussed that judicial resources would be wasted if the court consolidated multinational litigation because the court would be inundated with understanding and applying different patent regimes. Separate trials would be necessary and the costs of obtaining and translating evidence and experts would be prohibitive.
J. NEWMAN’S DISSENT
In a blistering dissent, Judge Newman took issue with every basis for the majority’s decision. The major thrust of her opinion is that American courts are called on every day to construe and apply foreign law and patent law should be no different. She berated her colleagues for essentially abdicating the obligation of United States courts to hear cases. She admonished, “judges cannot avoid cases because they may be complex.”
PHILOSOPHICAL RIFT
The majority and dissent represent quite clearly the philosophical division among practitioners and academics in the field. On the one hand, the “harmonizers” argue that a global market needs a global enforcement system, that the policies underlying patent law in industrialized nations are similar, as are the protections, and that forcing patent holders to litigate the same case the world over is a huge waste of resources and time. On the other hand, others – including the American Intellectual Property Law Association, the Intellectual Property Owners Association, the Federal Circuit Bar Association and the United States government – express as their major concern the notion of foreign courts determining U.S. patent matters, perhaps providing protections where none exist here. The fear that foreign interference will destroy the integrity of the U.S. patent enforcement system looms large.
It would not be surprising if the Supreme Court granted certiorari on this case, particularly since the Federal Circuit is not likely to develop it further.
The author, Thomas F. Zuber, Esq., is a partner of Zuber & Taillieu LLP, specializing in transactions relating to patents, trademarks and copyrights.
Patent Law Summary
Read the related Patent Law summary: District Court Has No Jurisdiction over Foreign Patent Claims, Federal Circuit Holds in Voda v. Cordis
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