CAFC Affirms dismissal of German claims

Dr. Bonzel v. Pfizer (Fed. Cir. 2006).

Bonzel, a German residing in Germany, originally sued Pfizer and others in Minnesota state court for breach of contract (patent license) — but asserted that patent infringement was not an issue. The Minnesota court dismissed on grounds of forum non conveniens — finding that the case should be decided under German law by German courts.

Bonzel refiled in Federal Court, and included assertions of patent infringement, but his case was again dismissed.  On appeal, the Court of Appeals for the Federal Circuit affirmed the dismissal.

Issues

Judicial Estoppel: Judicial estoppel applies “when a party takes a later position that is inconsistent with a former position in the same dispute, on which the party had been successful and had prevailed based on the former position.  The CAFC found no judicial estoppel with regards to Bonzel’s earlier assertions of “no patent infringement” because the complaint was “sufficiently changed.”

Patent Jurisdiction: Bonzel’s charges of breach of contract do not “arise under” the patent laws — even though the breach of contract charges would likely require a determination of whether infringement occurred.

Diversity: The court did not have diversity jurisdiction because foreigners were on both sides of the v.

National Treatment: Bonzel also argued that dismissing his case was not allowed under the Paris Convention’s requirement that a nation’s courts give “equal treatment to nationals of other nations.”  Here, Bonzel argues that his case is being dismissed because he is a German. The CAFC disagreed, finding that the treaties do not “establish jurisdiction or require a nation’s court to receive litigation that it reasonably believes would be better conducted in another nation.”

Comments

[Nadja Vietz]

I think the plaintiff wanted this case to take place in the United States so he could take advantage of the much more wide open discovery under U.S. law.