No Supplemental Jurisdiction in the U.S. for Infringement of Foreign Patents
In Voda, M.D. v. Cordis Corporation (February 1, 2007), the Federal Circuit held that the lower court erred in granting Voda leave to amend his complaint to add infringement claims based on foreign patents under 28 U.S.C. § 1367.
Voda’s amended complaint alleged infringement taking place outside the United States in violation of patents issued by various foreign countries.
Section 1367(a) provides the statutory authority for district courts to exercise supplemental jurisdiction over certain claims outside their original jurisdiction:
Except as provided in subsections (b) and (c) or as expressly provided otherwise by Federal statute, in any civil action of which the district courts have original jurisdiction, the district courts shall have supplemental jurisdiction over all other claims that are so related to claims in the action within such
original jurisdiction that they form part of the same case or controversy under Article III of the United States Constitution. Such supplemental jurisdiction shall include claims that involve the joinder or intervention of additional parties.
The Federal Circuit refrained from deciding whether Voda’s foreign patent infringement claims fall within the scope of the "same case or controversy" requirement of § 1367(a) and instead concluded that the district court’s exercise of supplemental jurisdiction over Voda’s foreign patent infringement claims was limited by Section 1367(c):
The district courts may decline to exercise supplemental jurisdiction over a claim under subsection (a) if—
(1) the claim raises a novel or complex issue of State law,
(2) the claim substantially predominates over the claim or
claims over which the district court has original jurisdiction,
(3) the district court has dismissed all claims over which it has original jurisdiction, or
(4) in exceptional circumstances, there are other compelling reasons for declining jurisdiction.
The lower court’s order contained no § 1367(c) analysis, and, according to the appellate court's opinion by Justic Gajarsa, "considerations of comity, judicial economy, convenience, fairness, and other exceptional circumstances constitute compelling reasons to decline jurisdiction under § 1367(c) in this case. . ."
In summary, several reasons in this case would compel the district court to decline supplemental jurisdiction under § 1367(c): limitations imposed by treaties that are the "supreme law of the land" and considerations of comity, judicial economy, convenience, and fairness. The district court undertook none
of this analysis. Accordingly, we hold that the district court abused its discretion in exercising supplemental jurisdiction.
As with the § 1367(a) factors of Mars, this is a non-exhaustive list, not a test, for district courts to consider under § 1367(c). In addition, we emphasize that because the exercise of supplemental jurisdiction under § 1367(c) is an area of discretion, the district courts should examine these reasons along with others that are relevant in every case, especially 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. However, "[d]iscretion is not whim, and limiting discretion according to legal standards helps promote the basic principle of justice that like cases should be decided alike . . . a page of history is worth a volume of logic." eBay, 126 S. Ct. at 1841-42 (Roberts, C.J.,
concurring) (quotation marks and citations omitted).