December 23, 2013 Articles

Patent Litigation: The Role of State-Law Causes of Action

Although traditionally a federal domain, patent litigators must be aware of the role that state law can play in their practice.

By Paul C. Van Slyke

It would seem that state law would have no place in most patent disputes. In many cases, however, a myriad of state-law claims can be used against a patent owner in a suit for declaratory judgment as well as against defendants in patent-infringement suits. This article will outline the intersection of state law with the traditionally federal domain of patent infringement. The patent litigator should be wary of ignoring potential state-law declaratory judgment claims and potential counterclaims under state law and the Lanham Act. This article gives a brief overview of the Texas tort-law claims for tortious interference with existing contractual relations and unfair competition. Not discussed in this article are additional state-law claims that may be pled, depending on the facts, such as tortious interference with prospective contractual relations, business disparagement, and trade libel.

Personal Jurisdiction over State-Law Claims
Although patent infringement is a uniquely federal claim, the prudent patent litigator cannot ignore the myriad of state-law causes of action that may be used to a litigant's advantage in a patent-infringement dispute. As a general rule, these state-law claims will be heard by a federal court under jurisdiction that is supplemental to the federal-question jurisdiction conferred by the issue of a patent infringement or validity. In some cases, federal courts, however, may exercise original and exclusive jurisdiction over such state-law causes of action even if a patent claim arising under 28 U.S.C. ยง 1338(a) (2012) is not yet ripe for adjudication. Oddly enough, in these instances, it is actually the state-law claims that provide entry to the federal courts.

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