Patent Law

Sleep Lite

By Gary Odom and Jordan Kuhn

LiteCubes sued Canada-based GlowProducts for infringing 6,416,198, as well as copyright infringement. '198 claims a light that looks like an ice cube. After found infringing, GlowProducts filed a motion to dismiss for lack of subject matter jurisdiction. On appeal, the CAFC unleashed a gratuitous stem-winder on jurisdiction. Simply, an allegation of patent infringement "creates a federal cause of action."

LiteCubes and Carl R. Vanderschuit v. Northern Light Products, dba GlowProducts (CAFC 2006-1646)

Vanderschuit is Mr. LightCube, inventor and owner of '198.

GlowProducts is a Canadian corporation operating from its offices in Victoria, British Columbia, which acquires novelty items from Chinese manufacturers and then sells the items primarily in North America. GlowProducts does not have offices, facilities, or assets in the United States. Evidence at trial, however, established that GlowProducts sold the accused products directly to customers located in the United States and that GlowProducts would ship the products, f.o.b., from its Canadian offices to its customers in the United States.

GlowProducts filed a motion to dismiss the case for lack of subject matter jurisdiction on the grounds that it did not sell the allegedly infringing products within the United States, nor import the products into the United States. The district court denied the motion on the grounds that GlowProducts did import the goods into the United States.

GlowProducts appeals the denial of its motion to dismiss for lack of subject matter jurisdiction. We affirm the district court's denial of the motion to dismiss, but do so on different grounds. The district court erred in treating the issue of whether the goods had been imported into the United States as an issue impacting its subject matter jurisdiction. A plaintiff must prove that allegedly infringing activity took place in the United States to prevail on claims of patent or copyright infringement, but as with any other element of the claims, failure to do so does not divest the federal courts of subject matter jurisdiction over the action.

Litecubes alleged in its complaint that GlowProducts violated 35 U.S.C. § 271(a), which provides that "[e]xcept as otherwise provided . . . whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefore, infringes the patent." It is beyond dispute that this statute creates a federal cause of action for patent infringement over which the district courts have subject matter jurisdiction under § 1338(a).

Foregoing reference to § 1338 refers to 28 U.S.C. § 1338, not 16 U.S.C. § 1338, which proscribes removing or harming free-roaming horses or burros from public lands without permission. Both however relate to asses, one literal, the other figurative.

Jurisdictional mavens will call this ruling a keeper. Others will call it a sleeper, as in, snoozingly boring.

Full post as published by The Patent Prospector on April 28, 2008 (boomark / email).