Chapter §25.08 Enforcement of Foreign Patents in U.S. Courts

• Jurisdiction: United States

§25.08 Enforcement of Foreign Patents in U.S. Courts

The U.S. Supreme Court's 2007 decision in Microsoft Corp. v. AT&T Corp.²¹⁸ reinforced a strong presumption against extraterritorial application of U.S. patents.²¹⁹ Because a U.S. court is unlikely to hold that acts occurring abroad infringe a U.S. patent, the conventional strategy for combating such acts requires that one has obtained patent protection in foreign countries and thereafter enforces the foreign patents in the courts of the foreign jurisdictions where the acts of infringement allegedly occurred. As commerce expands globally, the expense and complexity of conducting patent litigation in multiple foreign fora loom large.²²⁰

As a result, U.S. patent holders owning counterpart foreign patents on a particular invention have asked U.S. courts not only to decide the question of domestic infringement but also to exercise supplemental jurisdiction under 28 U.S.C. §1367 in order to decide whether the counterpart foreign patents have been infringed by foreign acts.²²¹ This strategy has not proved successful thus far, however, because the Federal Circuit has rejected district court exercises of supplemental jurisdiction over foreign patent issues.²²²

For example, the Federal Circuit held that a district court abused its discretion in exercising supplemental jurisdiction over foreign patent claims in the closely watched Voda v. Cordis Corp.²²³ The plaintiff Dr. Voda owned U.S. and foreign patents (the latter issuing from the same PCT application) directed to guiding catheters for use in interventional cardiology. Although the parties disputed whether Voda's U.S. and foreign patents differed in any material aspects, the same accused Cordis catheter was sold in the United States as well as France, Germany, the United Kingdom, and Canada. The Federal Circuit discussed but declined to decide under §1367(a) whether Voda's assertion of foreign patent infringement involved a "common nucleus of operative fact" with the question whether Voda's U.S. patent was infringed.²²⁴

Rather, the Federal Circuit in Voda held that the district court had abused its discretion under 28 U.S.C. §1367(c) by not declining to exercise supplemental jurisdiction.²²⁵ According to the Voda majority, "considerations of comity, judicial economy, convenience, fairness, and other exceptional circumstances constitute compelling reasons to decline jurisdiction . . . in this case."²²⁶ The majority first observed that nothing in the Paris Convention, PCT, or TRIPS Agreement "contemplates or allows one jurisdiction to adjudicate patents of another."²²⁷ With respect to comity, the majority saw "no reason why American courts should supplant British, Canadian, French, or German courts in interpreting and enforcing British, Canadian, European, French, or German patents."²²⁸ Judicial economy would not be realized by the exercise of supplemental jurisdiction because U.S. courts "lack...