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News - 2016

Mar. 2016

Joseph Cacace quoted in MLW article on federal court remand decision

Joseph M. Cacace was quoted in a Massachusetts Lawyers Weekly article on a federal court ruling that provides important guidance on the limits of federal jurisdiction when a defendant asserts patent counterclaims.

Mr. Cacace obtained on behalf of a client an order remanding a business dispute case to state court.

The federal court judge – interpreting the jurisdictional provisions of the America Invents Act (AIA) – issued the first known ruling in the District of Massachusetts that a federal court lacks subject matter jurisdiction over counterclaims for declaratory judgment of non-infringement of patents because the dispute failed to meet the "case or controversy" requirement under Article III of the U.S. Constitution.

The dispute is rooted in a soured business relationship concerning technology aimed first at treating hazardous wastes and later at manipulating and creating matter, among other things. The crux of the complaint is that the defendants allegedly stole trade secrets and confidential proprietary information from Mr. Cacace's client to use at a competing business.

Mr. Cacace said the ruling should make clear that filing a patent-infringement counterclaim in what is simply a business dispute does not serve as a “one-way ticket” to federal court under the America Invents Act.

“The defendants still need to meet the other jurisdictional requirements to be in federal court, such as presenting an actual case or controversy under Article III of the Constitution,” Cacace told Lawyers Weekly. “The defendants failed to do so in this case because it just did not involve a live dispute about patent infringement, and [the federal judge] was not about to issue an advisory opinion.”

Mr. Cacace concentrates his practice on complex civil matters, including business disputes.