Multi-country IP disputes in a single court - intriguing but unlikely for now

Voda v Cordis (2007) CAFC 05-1238 (1 February 2007)

Copyright Thursday, February 8, 2007 Duncan Bucknell Company

In a predictable blow to those wanting to decrease the costs of international intellectual property litigation, the US Court of Appeals for the Federal Circuit delivered its long-awaited judgment in Voda v Cordis on 1 February 2007. By a 2:1 majority, the Court refused to allow a US Court to determine patent infringement in relation to corresponding Canadian, French, German and United Kingdom patents.

While it would substantially reduce global litigation costs, the creation of appropriate international agreements to allow multi-jurisdictional determination seem unlikely for the foreseeable future. This is underscored by recent developments in Europe under the Brussels Regime and in relation to the well intentioned but ill-fated European Patent Litigation Agreement.

Background

Intellectual Property litigation, especially when related to patents, is notoriously expensive and time consuming - see for example “Value for money in global patent litigation: relative cost & time to 1st judgment in 8 key jurisdictions”.

One potential way to minimize cost would be to allow the courts of one jurisdiction to determine infringement of a group of related patents from a number of jurisdictions, in the same proceedings.

Voda v Cordis is a case in which an inventor, Mr Jan Voda, a medical practitioner sought to do just that. His patents concerned his cardiology catheter invention and he attempted to enforce corresponding patents granted in the USA, Canada, France, German and the United Kingdom in a single US law suit. Click here for a copy of the CAFC judgment.

Unfortunately for those wishing to reduce international patent litigation expense, Mr Voda lost at the Court of Appeals for the Federal Circuit. However, based on the Newman dissenting judgment, there seem be to be reasonable prospects of an appeal.

Comment

It seems correct to me that since an intellectual property right is a jurisdiction-based monopoly, then infringement should be determined by the State which granted it. Having said that, proponents in favour of Mr Voda’s case are quick to point out that the European system allows for a degree of cross-border determination of IP issues under the Brussels Regime (see for example my article “European intellectual property cat-and-mouse: ECJ clarifies jurisdiction in patent disputes”). However, as the article points out, even in Europe, the facts have to be so closely related that such collective actions seem to have little future under the current regime.

Of course, the reason that this has been possible in the past in Europe is because the relevant European countries are signatories to the Brussels Regime.

Although the suggestion is controversial one could imagine that by amending the Brussels regime, and indeed creating a new international convention, one could in the future see collective intellectual property actions being litigated once for multiple countries.

All of those who have been following the ill-fated tale of the European Patent Litigation Agreement will know that the chances of such international agreements being agreed, much less coming in to effect at any time in the foreseeable future must be extremely low.

Thanks to Johanna Gibson, one of the IPKat co-blogmeisters for alerting me about the judgment.

Links

IPKat commentary, click here.

Dennis Crouch’s Patently’O blog and discussion, click here.