If You Want to Contest Jurisdiction, Don’t File a Counterclaim

In Microsoft Corporation v, GeoTag, Inc., [2015-1140] (April 1, 2016), the Federal Circuit affirmed the district court’s exercise of jurisdiction (although on different grounds) and affirmed summary judgment of non-infringement.

In response to suits against their customers in the Eastern District of Texas, Microsoft and Google brought a declaratory judgment action against GeoTag for a declaration that U.S. Patent No. 5,930,474 is invalid and not infringed.  GeoTag filed a motion to dismiss and an answer and counterclaim for infringement of the ‘474 patent, arguing that the infringement action was a compulsory counterclaim which could not confer jurisdiction on the original declaratory judgment action. The district court, applying Third Circuit law, found jurisdiction because the counterclaim was not a compulsory counterclaim.  The Federal Circuit agreed that there was jurisdiction, but applying Federal Circuit, rather than Third Circuit law, and finding jurisdiction based upon GeoTag’s counterclaim, regardless of whether or not it was compulsory.  The Federal Circuit found that the district court retained subject matter jurisdiction over GeoTag’s patent infringement counterclaims pursuant to § 1338(a), such that it need not determine whether the District Court properly found that it had jurisdiction over Google’s First Amended Complaint.

ANDA Filings Create Personal Jurisdiction Everywhere

In Acorda Therapeutics, Inc. v, Mylan Pharmaceutical Inc., [2015-1460) (March 18, 2016), the Federal Circuit affirmed that Mylan was subject to specific personal jurisdiction in the District of Delaware,  The Federal Circuit said that under Fed. R. Civ. P. 4(k)(1)(A), the district court had personal jurisdiction over Mylan if Mylan would be “subject to the jurisdiction of a court of general jurisdiction in the state where the district court is located,” and there is no dispute that Mylan would be subject to Delaware courts’ jurisdiction under Delaware’s long-arm statute, Del. Code Ann. tit. 10, § 3104, as long as Delaware’s exercise of personal jurisdiction over Mylan would be consistent with the Fourteenth Amendment’s Due Process Clause.

The Federal Circuit noted that Mylan had taken the costly, significant step of applying to the FDA for approval to engage in future activities—including the marketing of its generic drugs— that will be purposefully directed at Delaware (and, it is undisputed, elsewhere). The Federal Circuit said that if Mylan had already begun its deliberate marketing of these drugs in Delaware, there is no doubt that it could be sued for infringement in Delaware. The Federal Circuit concluded that the minimum-contacts standard is satisfied by the particular actions Mylan has already taken—its ANDA filings—for the purpose of engaging in injury-causing and allegedly wrongful marketing conduct in Delaware.

 

While a Nice Place, Canada is not the Best Place to Litigate U.S. IP

In Halo Creative & Design Limited v. Comptoir des Indes Inc., [2015-1375] (March 14, 2016), the Federal Circuit reversed the Northern District of Illinois’ dismissal of Halo’s complaint for copyright, trademark and U.S. design patent infringement for forum non conveniens grounds because the Federal Court of Canada would be a superior forum.

Forum non conveniens, allows a court to dismiss a suit over which it would normally have jurisdiction if trial in a foreign forum would best serve the convenience of the parties and the ends of justice.  Whether dismissal would promote convenience and justice should be determined by weighing private and public interest factors. Private interest factors include the relative ease of access to sources of proof; availability of compulsory process for attendance of unwilling, and the cost of obtaining the attendance of unwilling, witnesses.  Public interest factors include congestion of the courts; the burden of jury duty imposed upon a community which has no relation to the litigation; a local interest in having localized controversies decided at home; and the potential for a conflict of laws.  The Federal Circuit found that Comptoir des Indes failed to meet its burden to show that Canada is a more appropriate forum for Halo’s claims of infringement of copyrights, trademarks, and patents in the United States.