Fed. Cir. reversed 9-0.
Holding 1: The Federal Circuit did not lack subject-matter jurisdiction in this case. Title 28 U.S.C. §1338(a) gives federal district courts exclusive jurisdiction over "any civil action arising under any Act of Congress relating to patents," and §1295(a)(1) gives the Federal Circuit appellate jurisdiction over any case where jurisdiction in the district court "was based, in whole or in part, on section 1338 ." The Declaratory Judgment Act does not "extend" the federal courts' "jurisdiction," Skelly Oil Co. v. Phillips Petroleum Co., 339 U.S. 667 , 671; and federal courts determining declaratory judgment jurisdiction often look to the "character" of the declaratory judgment defendant's "threatened action," Public Serv. Comm'n of Utah v. Wycoff Co., 344 U.S. 237 , 248, i.e., whether the defendant's hypothetical "coercive action" "would necessarily present a federal question," Franchise Tax Bd. of Cal. v. Construction Laborers Vacation Trust for Southern Cal., 463 U.S. 1 , 19. Here, if Medtronic had acted consistent with the understanding of its rights that it seeks to establish through the declaratory judgment suit (by ceasing to pay royalties), Mirowski could terminate the license and bring a suit for infringement. That suit would arise under federal patent law because "patent law creates the cause of action." Christianson v. Colt Industries Operating Corp., 486 U.S. 800 , 809. Thus, this declaratory judgment action, which avoids that hypothetical threatened action, also "arises under" federal patent law. See, e.g., Security-First Nat. Bank of Los Angeles v. Franchise Tax Bd. of Cal., 368 U.S. 3 , 19. Pp. 4-6.
Holding 2:
When a licensee seeks a declaratory judgment against a patentee that its products do not infringe the licensed patent, the patentee bears the burden of persuasion on the issue of infringement. Pp. 6-11.
Dennis Crouch's coverage:
http://patentlyo.com/patent/2014/01/reverses-patentees-infringement.html
Ars Technica:
No comments:
Post a Comment