James Wallace and Alexander Owczarczak Comment on AIA’s Patent-Related Counterclaims Provision 

July 26, 2016

James H. Wallace, Jr., partner and chair emeritus of Wiley Rein’s Intellectual Property Practice, and Patent Practice associate Alexander B. Owczarczak were quoted in a July 22 article in BNA’s Patent, Trademark & Copyright Journal about a recent federal court decision in Univ. of Fla. Research Found., Inc. v. Medtronic PLC.

The U.S. District Court for the Northern District of Florida ruled that the America Invents Act (AIA) didn’t change the University of Florida Research Foundation, Inc.’s right to seek a claim of Medtronic subsidiary Covidien’s breach of a patent license in state court, according to the article. Although the AIA has a provision allowing cases with patent-related counterclaims to be brought before a federal district judge, the court held that state immunity under the 11th Amendment would still be in effect.

Mr. Wallace and Mr. Owczarczak commented, “The counterclaim—rather than a defense—was a ploy to get the case into federal court.”