Voda v. Cordis: No Supplemental Jurisdiction Over Foreign Patents

Voda v. Cordis Corp., 476 F.3d 887 (Fed. Cir. 2007), decided February 1, 2007, is the controlling American answer to a question every owner of a global patent family eventually asks: can one lawsuit in a United States court resolve infringement of the whole portfolio, foreign patents included? In a 2-1 decision written by Judge Gajarsa, the Federal Circuit said no. A district court should not exercise supplemental jurisdiction under 28 U.S.C. § 1367 over claims for infringement of foreign patents. The decision channels multinational patent disputes back into the courts of each granting nation and remains the reference point for cross-border enforcement strategy.

At a glance

• Case: Voda v. Cordis Corp., 476 F.3d 887 (Fed. Cir. 2007), No. 05-1238
• Decided: February 1, 2007; Federal Circuit, opinion by Judge Gajarsa, Judge Newman dissenting; interlocutory appeal from the U.S. District Court for the Western District of Oklahoma
• Holding: The district court abused its discretion in exercising supplemental jurisdiction under § 1367 over claims of infringement of foreign patents; the court identified limitations imposed by treaties that are the supreme law of the land, along with considerations of comity, judicial economy, convenience, and fairness, as compelling reasons to decline
• Status: Final; the district court’s grant of leave to add the foreign claims was vacated and the case remanded

The doctrinal frame: supplemental jurisdiction and its limits

A federal court with jurisdiction over a claim may reach related claims under 28 U.S.C. § 1367, which codifies supplemental jurisdiction over matters forming part of the same case or controversy. But § 1367(c) preserves discretion to decline: a court may refuse supplemental jurisdiction when a claim raises a novel or complex issue of state law, substantially predominates over the anchor claim, or, most pertinent here, when there are other compelling reasons in exceptional circumstances. The question in Voda was whether claims for infringement of British, French, German, Canadian, and European Patent Office patents could be bolted onto a U.S. patent suit through § 1367, and if arguably they could, whether the court should exercise that jurisdiction.

The facts and posture

Dr. Jan K. Voda invented guide catheters used in interventional cardiology and held patents on them in the United States and abroad. He sued Cordis Corporation in the Western District of Oklahoma for infringing his U.S. patents, then sought leave to amend to add claims that Cordis infringed his corresponding foreign patents, granted by the United Kingdom, France, Germany, Canada, and the European Patent Office. The district court granted leave, finding that § 1367 supplied supplemental jurisdiction over the foreign patent claims because they shared a common nucleus of operative fact with the domestic claims. Cordis took an interlocutory appeal, and the Federal Circuit agreed to decide whether the foreign claims belonged in a U.S. court.

The court’s reasoning: sovereignty, treaties, and comity

Judge Gajarsa’s majority opinion assumed for argument that the statutory threshold of § 1367(a) might be met, then held that the district court abused its discretion by failing to weigh the compelling reasons to decline under § 1367(c)(4). Several independent strands converged.

First, the international patent treaties the United States has joined counsel against one nation adjudicating another’s patents. The Paris Convention for the Protection of Industrial Property and the Patent Cooperation Treaty are built on the independence of each country’s sovereign patent system. Nothing in either instrument contemplates or authorizes one jurisdiction to adjudicate the patents of another. Because ratified treaties are part of the supreme law of the land, a U.S. court’s assertion of jurisdiction over foreign patents could undercut obligations the United States has undertaken, which itself is an exceptional circumstance.

Second, comity, the respect one sovereign extends to the acts and institutions of another, weighs heavily against a U.S. court sitting in judgment on the scope and infringement of patents granted by foreign governments. The act of state doctrine points the same way, though the court handled it cautiously. It assumed for argument that the doctrine applies, observing only that no party had persuaded it that the grant of a patent by a sovereign is not an act of state, and noting that the Third Circuit had declined to treat the issuance of foreign patents that way in Mannington Mills, Inc. v. Congoleum Corp., 595 F.2d 1287 (3d Cir. 1979). On that assumption, the doctrine would keep American courts from inquiring into the validity of a foreign patent grant, which the majority folded into the fairness side of the analysis rather than making it an independent basis for the result.

Third, practical and prudential concerns cut the same way. Adjudicating foreign patents would require applying multiple bodies of foreign law, resolving foreign claim-construction and validity questions, managing translations and foreign expert testimony, and issuing judgments whose enforceability abroad is uncertain. These are the ordinary concerns of forum non conveniens and judicial administration, and they compound the sovereignty problems.

Judge Newman dissented. She would have permitted the district court to exercise jurisdiction, emphasizing efficiency and the reality that a single accused product often infringes parallel patents across a family, so that piecemeal country-by-country litigation multiplies cost and risks inconsistent results. Her dissent frames the policy tension the majority resolved in favor of sovereignty over consolidation.

What the decision changed

Voda did not erect an absolute jurisdictional bar, but its reasoning makes the exercise of supplemental jurisdiction over foreign patents very hard to justify, and lower courts have read it as a practical prohibition. The upshot is structural: a company that holds a worldwide patent family and faces a global infringer generally cannot obtain a single American judgment covering the foreign rights. It must enforce nation by nation, in each granting country’s courts and under each country’s law. That reality shapes budgets, timing, settlement leverage, and the choice of where to file first.

Open questions

Because the majority rested on discretion rather than a categorical rule, a narrow aperture remains. Could a case present facts so exceptional, perhaps parties who consent, a single controlling body of law, or foreign patents whose validity is not contested, that a district court could permissibly retain jurisdiction? Voda does not foreclose the possibility, but no reading of the opinion makes it easy. The decision also predates deeper harmonization efforts and the rise of specialized fora such as Europe’s Unified Patent Court, which now consolidates litigation across many European states in a way no single national court once could. How American courts will regard judgments and structures emerging from those regional systems remains unsettled. Finally, Voda leaves untouched the arbitration alternative, where parties can by agreement submit a global family to a single tribunal, sidestepping the sovereignty barrier the court erected for litigation.

Implications for inventors and businesses

• Plan for country-by-country enforcement. Do not assume a U.S. suit can sweep in the foreign family. Budget and sequence litigation jurisdiction by jurisdiction, and pick the lead forum for strategic effect.
• Use contracts to consolidate what courts will not. Where a single accused party is involved, a well-drafted arbitration clause can achieve the global resolution Voda denies to litigation.
• Coordinate parallel proceedings. Because parallel patents in different countries turn on different law, align claim-construction and validity positions across borders to avoid self-inflicted inconsistencies.
• Factor in the treaty logic. The independence of national patent systems is not a technicality; it is the organizing principle courts invoke. Structure global strategy around separate sovereign rights rather than a mythical unitary world patent.

Frequently asked questions

Can a U.S. court hear claims for infringement of foreign patents? Under Voda v. Cordis, a district court should decline supplemental jurisdiction under 28 U.S.C. § 1367 over foreign patent infringement claims. The Federal Circuit identified limitations imposed by treaties such as the Paris Convention and PCT, which rest on the independence of national patent systems, along with considerations of comity, judicial economy, convenience, and fairness, as compelling reasons to refuse jurisdiction.

Does Voda mean foreign patents can never be litigated in the United States? It strongly discourages it. The court stopped short of a categorical bar, framing the result under the discretionary factors of § 1367(c), but its reasoning makes exercising jurisdiction over foreign patents difficult to justify, so cross-border owners generally must sue country by country.

Why do treaties like the Paris Convention weigh against U.S. jurisdiction over foreign patents? Those treaties are built on the independence of each nation’s patent grant. The Paris Convention and PCT preserve separate national rights rather than a unified global patent, so having one country’s court adjudicate another’s patents would cut against the treaty structure the United States has ratified.

Authorities and sources

• Voda v. Cordis Corp., 476 F.3d 887 (Fed. Cir. 2007), No. 05-1238 (Feb. 1, 2007), full opinion text.
• 28 U.S.C. § 1367 (supplemental jurisdiction).
• Paris Convention for the Protection of Industrial Property; Patent Cooperation Treaty (independence of national patents).
• Patently-O, “Voda v. Cordis: Plaintiff May Not Assert Foreign Patents in US Courts”.
• The IP Law Blog, “U.S. Courts Should Not Decide Foreign Patent Infringement”.