The Federal Circuit Court of Appeals has determined that a dispute over allegedly false statements about patents did not raise a substantial question of federal patent law and thus the federal courts lacked jurisdiction to hear the dispute; the case was remanded to the district court with instructions to remand the matter to New Hampshire state court. Forrester Envtl. Servs., Inc. v. Wheelbrator Techs., Inc., No. 2012-1686 (Fed. Cir., decided May 16, 2013).

While the Federal Circuit opined that prior cases raising a similar issue may well have survived a jurisdictional challenge under Gunn v. Minton, 133 S. Ct. 1059 (2013), in which the U.S. Supreme Court ruled that a legal malpractice claim related to a patent matter belonged in state court, this case did not involve activities that could infringe U.S. patent rights. At issue were statements made by the defendant, one of the plaintiff’s competitors, allegedly resulting in the plaintiff’s loss of a customer in Taiwan.

According to the court, the allegedly inaccurate statements concerned conduct taking place entirely in Taiwan. “The use of a patented process outside the United States is not an act of patent infringement.” And because no product made with a U.S. patented process would be imported into the United States “there is no prospect of a future U.S. infringement suit arising out of [the customer’s use of the patented process] in Taiwan, and accordingly no prospect of inconsistent judgments between state and federal courts. . . . Here, as in Gunn, the potential conflict is purely ‘hypothetical.’”