Subject Matter Jurisdiction After MedImmune

Yesterday, Judge Jones issued a decision that required the Court to "traverse uncharted territory between the Supreme Court’s decision in MedImmune, Inc. v. Genentech, Inc., 127 S.Ct. 764 (2007), and the Federal Circuit’s decision in Monsanto Co. v. Bayer Bioscience N.V., 514 F.3d 1229 (Fed. Cir. 2008)."

Because I'm personally involved in this case on behalf of National Products, Inc., I'll limit my commentary to simply state that the ruling is important, timely, and useful for patent litigators attempting to navigate the jurisdictional coral reef left by the Supreme Court's decision in MedImmune. It involves a situation where a patentee filed suit for infringement and was later provided information by the defendant claiming to have sold the accused device more than one year before the filing date. Once this evidence was evaluated, the patentee provided a covenant not to sue and sought dismissal of the case, including DJ counterclaims for noninfringement and invalidity. This case reaffirms settled law that a covenant not to sue divests the court of DJ jurisdiction over counterclaims for invalidity and noninfringement. However, the court may in some case retain jurisdiction to hear requests for fees under 35 U.S.C. section 285.


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