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Genetic Veterinary Scis., Inc. v. LABOKLIN GmbH & Co. KG

United States Court of Appeals for the Federal Circuit

July 29, 2019, Decided; July 29, 2019, Sealed Opinion Issued; August 9, 20191, Public Opinion Issued



 [*1307]  Wallach, Circuit Judge.

Appellee Genetic Veterinary Sciences, Inc., d/b/a Paw Prints Genetics ("PPG") sued Appellants LABOKLIN GmbH & Co. KG ("LABOKLIN") and the University of Bern ("the University") (together, "Appellants") in the U.S. District Court for the Eastern District of Virginia ("District Court"), seeking a declaratory judgment that claims 1-3 ("Asserted Claims") of the University's U.S. Patent No. 9,157,114 ("the '114 patent") are patent-ineligible under 35 U.S.C. § 101 (2012).2 J.A. 50-57 (Complaint). Appellants filed a motion to dismiss the Complaint for, inter alia, lack of subject-matter jurisdiction and lack of personal jurisdiction, see J.A. 58-60, which the District Court denied, see J.A. 302-16 (Order). Following the close of the parties' evidence during a jury trial but before submitting [**2]  the case to the jury, the District Court granted PPG's motion for judgment as a matter of law ("JMOL") and held the Asserted Claims patent-ineligible under § 101. See Genetic Veterinary Scis., Inc. v. LABOKLIN GmbH & Co., KG, 314 F. Supp. 3d 727, 728 (E.D. Va. 2018), appeal dismissed, No. 18-1625, 2018 WL 6334978 (4th Cir. June 5, 2018); see also J.A. 1 (Final Judgment).

Appellants appeal the District Court's conclusions as to jurisdiction and patent-ineligibility. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1) (2012). We affirm.


The University is the owner of the '114 patent and an agent or instrumentality of the Swiss Confederation, "having a place of business in Bern, Switzerland." J.A. 1090. In 2013, the University granted an exclusive license of its '114 patent to the German company LABOKLIN, J.A. 1091, whose "principal place of business is in Bad Kissingen, Germany," J.A. 1090; see J.A. 173-218 (Confidential License Agreement). Among many conditions of the License Agreement, LABOKLIN was required to commercialize the invention in North America "within [a specific time period] of the Effective date." J.A. 214-15. Subsequently, and at the time of the filing of Appellants' Motion to Dismiss, LABOKLIN had entered into two sublicenses in the United States. See J.A. 309, 349-51 (referencing California and Michigan sublicensees). The License Agreement [**3]  required both LABOKLIN and the University to obtain the other's consent prior to sending any cease-and-desist letter to a potential infringer. J.A. 217. The License Agreement further stated that if the infringing activity "d[oes] not abate within [a specific time period]" and the University gives LABOKLIN written notice of its election not to bring suit, LABOKLIN has a right to sue for infringement. J.A. 218.

PPG is a corporation headquartered in the State of Washington. J.A. 302. It offers laboratory services for testing for genetic variations and mutations known to cause certain diseases in dogs, including a test for "detect[ing] the presence of a mutation in the SUV39H2 gene." J.A. 302. Relevant to the facts of this case, PPG would accept a customer's request to test sample DNA received "from all over the world" and once the DNA test was concluded, would send the results back to the customer. See J.A. 101-02, 68. In January 2017, after obtaining the University's consent to send PPG a cease-and-desist letter, see J.A. 312, 349, 353, counsel for LABOKLIN sent a cease-and-desist letter to PPG at its business location in Spokane, Washington, see J.A. 99-104. The cease-and-desist letter [**4]   [*1308]  explained that "[LABOKLIN] is the exclusive license holder of [the '114 patent]," J.A. 100, as well as the exclusive licensee of the related European and German patents, see J.A. 99, all of which were attached as enclosures, and the letter stated that given "[PPG] make[s] use of the patent as defined in above-mentioned patent claim 1[,] . . . you [PPG] have committed an act of patent infringement," J.A. 102. After receiving the cease-and-desist letter, PPG brought suit against both LABOKLIN and the University, requesting declaratory judgment that the Asserted Claims of the '114 patent are ineligible under § 101 for failing to claim patent-eligible subject matter, and ultimately asserting that PPG therefore cannot be liable for infringing the Asserted Claims. See J.A. 50-57.3

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933 F.3d 1302 *; 2019 U.S. App. LEXIS 23754 **


Subsequent History: Later proceeding at Genetic Veterinary Sciences, Inc. v. Laboklin Gmbh & Co. KG, 2019 U.S. App. LEXIS 23760 (Fed. Cir., Aug. 9, 2019)

Prior History:  [**1] Appeal from the United States District Court for the Eastern District of Virginia in No. 2:17-cv-00108-HCM-DEM, Senior Judge Henry C. Morgan, Jr.

Genetic Veterinary Scis., Inc. v. LABOklin GmbH & Co. KG, 314 F. Supp. 3d 727, 2018 U.S. Dist. LEXIS 81152 (E.D. Va., May 11, 2018)

Disposition: AFFIRMED.


patent, district court, personal jurisdiction, genotyping, commercial activity, cease-and-desist, mutation, natural phenomena, Genetic, patent-ineligible, inventive, foreign state, infringement, detecting, due process, quotation, marks, eligibility, immunity, license, primer, dog, subject matter, subject-matter, nucleotide, patent-eligible, discovery, recite, steps, license agreement

Civil Procedure, Jurisdiction, In Rem & Personal Jurisdiction, In Personam Actions, Patent Law, Jurisdiction & Review, Standards of Review, Clearly Erroneous Review, Personal Jurisdiction & Venue, De Novo Review, Service of Process, Methods of Service, Foreign Service, In Personam Actions, Due Process, Minimum Contacts, Purposeful Availment, International Law, Sovereign Immunity, Foreign Sovereign Immunities Act, Appellate Review of Decisions, Personal Jurisdiction & Venue, Foreign Defendants, In Personam Jurisdiction, Exceptions, Commercial Activities, Construction & Interpretation, Commercial Activities, Nexus With Cause of Action, Appeals, Trials, Judgment as Matter of Law, Subject Matter, Utility Patents, Process Patents, New Uses, Subject Matter, Utility Patents