Sung on Subject Matter Jurisdiction Under 28 U.S.C. 1338(a) Does Not Depend on the Ability to Prove Infringing Act Occurred in the United States: Litecubes, LLC v. N. Light Prods., Inc., 523 F.3d 1353 (Fed. Cir. 2008)
Partner, Dewey & LeBoeuf LLP; Professor & Intellectual Property Law Program Director, University of Maryland School of Law
The ability to enforce a U.S. patent is not unbounded. Under 35 U.S.C. § 271, "whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patent invention during the term of the patent therefore, infringes the patent." The scope of patent infringement liability under § 271 is thus limited, inter alia, to activity that occurs within the territorial United States. But does this extraterritoriality prohibition create a jurisdictional prerequisite? Lawrence M. Sung addresses the issue of whether the asserted inability of the patentee to prove that the allegedly infringing act happened in the United States may somehow divest a federal court of subject matter jurisdiction over the patent infringement claim. He writes:
Litecubes filed this [patent infringement] action in April 2004. A five-day jury trial was held in October 2005. Midway through trial, GlowProducts [a Canadian corporation operating from its offices in Victoria, British Columbia] raised for the first time the issue of subject matter jurisdiction, arguing that the trial court did not have jurisdiction over the claims because there was no evidence that at the time the lawsuit was brought GlowProducts had made any sales in the United States or imported products into the United States. GlowProducts’ theory was that because its sales to United States’ customers were shipped f.o.b. [free on board], the sales took place in Canada and that it was the customer who imported the goods into the United States.
After the trial had concluded and the jury entered a verdict of willful infringement, GlowProducts filed a motion to dismiss for lack of subject matter jurisdiction on these grounds. Neither Litecubes nor the district court challenged GlowProducts characterization of the issue as jurisdictional. Instead Litecubes opposed the motion on the grounds that there was ample evidence that GlowProducts had sold, offered to sell, or imported the allegedly infringing products to the United States. The district court agreed. The district court also dismissed GlowProducts’ motions for judgment as a matter of law (JMOL), concluding that substantial evidence supported the jury verdict. After the district court issued a final judgment, GlowProducts appealed. In their initial briefing to the Federal Circuit, both parties assumed, without any analysis, that the issue of whether there was allegedly infringing activity in the United States was jurisdictional. The Federal Circuit panel requested the parties to address this issue at oral argument, where Litecubes argued for the first time that the issue was not one of subject matter jurisdiction, but should properly be considered an element of the claim. GlowProducts did not provide any authority to the contrary, suggesting only that it was “not an easy question.”
The Federal Circuit affirmed the district court’s denial of GlowProducts motion to dismiss, but on different grounds. The Federal Circuit seized upon the unremarkable, yet fundamental, principle that subject matter jurisdiction does not fail simply because the plaintiff might be unable to ultimately succeed on the merits. The Federal Circuit acknowledged the operation of certain statutes that set forth truly jurisdictional limitations as opposed to mere elements of a claim that must be established to prevail on the merits. But the touchstone according to the Federal Circuit was whether Congress has clearly designated a statutory element to be a threshold jurisdictional requirement. If the answer is no, then following the bright line rule of Arbaugh v. Y & H Corp., 546 U.S. 500 (2006), such an element must be treated as non-jurisdictional.
(citations omitted)