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Baker-Bauman v. Walker

March 29, 2007

TYEIS L. BAKER-BAUMAN, ET AL., PLAINTIFFS,
v.
HAROLD A. WALKER, DEFENDANT.



The opinion of the court was delivered by: Judge Walter Herbert Rice

DECISION AND ENTRY OVERRULING DEFENDANT'S MOTION TO DISMISS CLAIMS OF FOREIGN PATENT INFRINGEMENT (DOC. #18)

Plaintiffs bring this litigation against Defendant Harold Walker, setting forth a number of claims in their Complaint (Doc. #1), including a claim alleging that Defendant has infringed on four patents owned by Plaintiff Tyeis Baker-Bauman: two United States Patents and two foreign patents, to wit: Australian Patent No. 757,322 and China Patent Application for Invention No. 011109149. Doc. #1 at ¶¶ 48-62. This case is now before the Court on the Defendant's motion, requesting that this Court dismiss the Plaintiff's patent infringement claim, as it relates to the two foreign patents, for lack of subject matter jurisdiction in accordance with Fed. R. Civ. P. 12(b)(1). See Doc. #18. For reasons which follow, this Court overrules Defendant's Motion to Dismiss Claims of Foreign Patent Infringement (Doc. #18).

In their Complaint, Plaintiffs allege that this Court can exercise diversity jurisdiction over this litigation, in accordance with 28 U.S.C. § 1332(a). See Doc. #1 at ¶ 7. Section 1332(a) provides:

(a) The district courts shall have original jurisdiction of all civil actions where the matter in controversy exceeds the sum or value of $75,000, exclusive of interest and costs, and is between--

(1) citizens of different States;

(2) citizens of a State and citizens or subjects of a foreign state;

(3) citizens of different States and in which citizens or subjects of a foreign state are additional parties; and

(4) a foreign state, defined in section 1603(a) of this title, as plaintiff and citizens of a State or of different States.

(Emphasis added).*fn1 As can be seen, Congress has decided that District Courts can exercise subject matter over all civil actions in which the amount in controversy exceeds $75,000, between diverse parties.*fn2 When it enacted § 1332(a), Congress did not include an exception for claims predicated upon foreign patents.*fn3 Indeed, federal courts are routinely called upon to resolve claims arising under foreign law. Thus, a provision in the Federal Rules of Civil Procedure establishes the method to determine foreign law. See Fed. R. Civ. P. 44.1. Moreover, the Supreme Court has held that the fact that a claim is predicated upon foreign law provides part of the justification necessary for a District Court to decline to exercise diversity jurisdiction under the forum non conveniens doctrine established in Gulf Oil Corp. v. Gilbert, 330 U.S. 501 (1947). Piper Aircraft Co. v. Reyno, 454 U.S. 235 (1981). Herein, the Defendant has not sought dismissal of the infringement of the foreign patent claims on the basis of that doctrine, even though the Federal Circuit has indicated that forum non conveniens can serve as a basis for dismissing such claims. Mars, Inc. v. Kabushiki-Kaisha Nippon Conlux, 24 F.3d 1368 (Fed. Cir.1994).*fn4

Nevertheless, without discussing or citing the statutory text, the Defendant argues that this Court cannot exercise diversity jurisdiction in accordance with the decision of the Federal Circuit in Stein Associates, Inc. v. Heat & Control, Inc., 748 F.2d 653 (Fed .Cir.1984).*fn5 Therein, the plaintiff alleged that the defendant's patents, including one issued by the United Kingdom, were invalid and claimed that defendant's misuse of its patents violated the Sherman Act, 15 U.S.C. § 1, et seq. The defendant counterclaimed for infringement of the patents. During the course of the litigation, the plaintiff requested preliminary injunctive relief, preventing the defendant from attempting to enforce its United Kingdom patent before a tribunal in that country. The District Court denied the requested preliminary injunction, and the Federal Circuit affirmed. In Voda v. Cordis Corp., 476 F.3d 887 (Fed. Cir. 2007),*fn6 the Federal Circuit explained its holding in Stein Associates:

In Stein Associates, Inc. v. Heat & Control, Inc., 748 F.2d 653, 658 (Fed. Cir.1984), this court held that U.S. district courts had no discretionary power to enjoin a party from enforcing a foreign patent before a foreign tribunal.

Id. at 890. Quite simply, it is fanciful to argue that such a holding establishes the proposition that District Courts cannot exercise diversity jurisdiction over patent infringement actions based upon foreign patents.

Accordingly, the Court overrules Defendant's Motion to Dismiss Claims of Foreign Patent ...


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