Patent Litigation: Federal Circuit Provides Guidance on Claim Selection Procedures and Federal Jurisdiction Over Patent License Disputes

Sullivan & Cromwell LLP - February 22, 2011

Last week, the United States Court of Appeals for the Federal Circuit issued two noteworthy decisions addressing commonly arising procedural issues in patent litigation. In the first, In re Katz, the Federal Circuit upheld a district court judge’s decision to limit the number of claims asserted by the patent holder. The court held that because the claim selection procedure devised by the district court allowed the patentee the opportunity to identify additional claims raising unique infringement or invalidity issues — which the patentee failed to do — the procedure did not violate due process rights. In the second, ABB v. Cooper Industries, the Federal Circuit clarified that a declaratory judgment action with respect to the scope of a patent license agreement is subject to federal court jurisdiction, even if the only issue presented is construction of a license under state law.