No, the federal court has exclusive jurisdiction over patent infringement claims. The Superior Court of California can adjudicate limited types of intellectual property related disputes such as common law trademark infringement, anti-dilution under Cal. Bus. & Prof. Code 14330, misappropriation of trade secrets under California’s Uniform Trade Secrets Act ("UTSA") [Cal. Civil Code §§ 3426-3426.11], and unfair competition under California Business and Professions Code sections 17200 and 17500.
Joseph Caleb MarkowitzLitigation LawyerLos Angeles, CA ·
No, federal courts have exclusive jurisdiction over patent infringement claims. Some other types of intellectual property claims can be brought in state court, but if you're suing for patent infringement, you have to file in federal court, and the federal court will also hear any related state law claims.
Christopher Muir NeumeyerContracts / Agreements LawyerU.S. Minor Outlying Islands ·
Mr. Markowitz is correct: federal courts have exclusive jurisdiction to hear patent infringement cases, but state courts may hear other cases relating to patents. For example, I negotiated a patent license agreement for a client who subsequently terminated the agreement, pursuant to its terms, and refused to make the final payment described in the agreement, because the license was terminated and therefore that final payment was no longer due. The patent owner disagreed and sued in federal court, claiming my client was in breach and owed that final payment for use of the patents. We got the case dismissed from federal court, because there was no diversity jurisdiction (all parties were foreigners) and there was no federal question involved (the suit was not for patent infringement, but for breach of contract, which is a state court action). The patent owner then filed suit in state court, where it belonged.
This case "must" be filed in Federal District Court if it includes a claim for patent infringement under Title 35, Patent Act. If this claim is not ultimately a part of the case, for example, if the real dispute is a failure to pay royalties in accordance to a license agreement, then that claim is effectively one for breach of contract and can be heard, IF the patent infringment claim is not brought, in a Superior Court trial court. You say there are other issues of IP rights. If those rights relate to Trade Secrets, then your case can be hear in Superior Court under Cal Civ Code 3426 as long as patent claim not part of this suit. Finally, a trademark dispute could potentially be heard in either state court or Federal court depending on the facts of a trademark dispute. If there are any disputes involving a copyright infringement, it also is subject to Exclusive Jurisdiction. Good luck. You should speak with an intellectual property litigation at your earliest opportunity.