Federal Circuit Jurisdiction Over Patent Contract Disputes

In a precedential order issued in Jang v. Boston Scientific Corp., the Federal Circuit held that it has jurisdiction over the parties' patent-related contract dispute under Gunn v. Minton even though the patents at issue have been invalidated. Despite having found Federal Circuit jurisdiction, the court denied the parties' petition for permission to bring an interlocutory appeal because too many potentially relevant facts were unresolved.

Procedural History

As noted in the Federal Circuit's order, this decision marks the third time the Federal Circuit has heard issues in this case. The bare facts laid out for the latest proceeding are as follows:

The parties had "entered into an agreement whereby Jang assigned his rights in various patents to petitioners in exchange for an upfront payment and a promise under defined circumstances to pay additional compensation if petitioners sold stents covered by Jang's patents." In 2005, Jang sued BSC "in federal court for breach of contract and other various state law claims, basing jurisdiction on diversity of citizenship and alleging that petitioners had failed to compensate Jang for the sale of certain covered stent products. While the case was pending, "petitioners filed requests for ex parte reexamination" of the patents, pursuant to which "the claims at issue were canceled in issued...