             NOTE: Pursuant to Fed. Cir. R. 47.6, this disposition
              is not citable as precedent. It is a public record.

United States Court of Appeals for the Federal Circuit


                                         05-1556



                                ANATOLY ROZENBLAT,

                                                              Plaintiff-Appellant,
                                            v.

                               SANDIA CORPORATION,
                              and PETER VAN BLARIGAN,

                                                              Defendants-Appellees,
                                           and

                UNITED STATES PATENT AND TRADEMARK OFFICE,

                                                              Defendant-Appellee.



                           __________________________

                           DECIDED: March 17, 2006
                           __________________________



Before NEWMAN, BRYSON, and PROST, Circuit Judges.

NEWMAN, Circuit Judge.



      Anatoly Rozenblat appeals the decision of the United States District Court for the

Northern District of Illinois dismissing his claim against Sandia Corporation and Peter Van

Blarigan for lack of subject matter and personal jurisdiction, and dismissing his claim
against the Patent and Trademark Office ("PTO") for lack of subject matter jurisdiction.1

We affirm.

                                       BACKGROUND

       Mr. Rozenblat brought this action seeking a declaration by the court that U.S. Patent

No. 6,199,519 (the "'519 patent") is invalid. The '519 patent is entitled "Free-Piston Engine"

and is directed to a combustion system for generating electrical current in a hybrid

automobile. Mr. Rozenblat's complaint was directed against Mr. Van Blarigan and Sandia

Corporation as the inventor and owner of the patent, respectively, and against the PTO as

the party that issued the patent in error:

       Peter Van Blarigan, as the inventor, and Sandia Corporation, as the assignee
       . . . illegally use the above-known Plaintiff's original Copyrighted and scientific
       works; [and] Patent and Trademark Office in period of Examining Procedure
       Process, in question of PRIOR ART and definition of novelty and originality,
       and also of issue new U.S. Patent 6,199,519, made the big mistake because
       they did not take under consideration the known Plaintiff's intellectual works
       which have the early priority than U.S. Patent 6,199,519, and besides these
       works were Copyrighted and published for publicity in USA and abroad in the
       different sources . . . .

(emphasis in original). The district court dismissed the claim against Mr. Van Blarigan and

Sandia Corporation for lack of subject matter jurisdiction because Mr. Rozenblat had not

established an actual controversy with these defendants. The court observed that Mr.

Rozenblat had not alleged that there had been any threat of a patent infringement suit, nor

any communication with the defendants, nor any allegation that he is engaged in activity

that could be deemed infringement of the '519 patent. The court also held in the alternative


      1       Rozenblat v. Sandia Corp., No. 04-C-3289, 2005 U.S. Dist. LEXIS 9583 (May
2, 2005).




05-1556                                        2
that even if there were subject matter jurisdiction, dismissal would nonetheless be proper

for lack of personal jurisdiction, because Mr. Rozenblat had not shown that Mr. Blarigan

and Sandia Corporation had sufficient contacts with Illinois to establish general or specific

personal jurisdiction.

       The court dismissed the claim against the PTO for lack of subject matter jurisdiction,

observing that Mr. Rozenblat had not pointed to any statute indicating that Congress

intended to waive sovereign immunity to allow his suit, that his claim for a declaratory

judgment was not sufficient because he had not established an actual controversy with the

PTO, and that Mr. Rozenblat had not exhausted the administrative remedy of requesting

patent reexamination.

       On May 10, 2005 Mr. Rozenblat timely but incorrectly filed his appeal in the Court of

Appeals for the Seventh Circuit, which transferred the appeal to this court on August 29,

2005. See 28 U.S.C. §1295(a) (the Federal Circuit has jurisdiction over appeals of final

decisions in patent actions).

                                       DISCUSSION

       On appeal, Mr. Rozenblat asserts error in the district court's dismissal, for lack of

jurisdiction, of his claim against Van Blarigan and Sandia Corporation, and of his claim

against the PTO. When jurisdictional facts are undisputed, jurisdiction is a question of law

that we review de novo. Akro Corp. v. Luker, 45 F.3d 1541, 1543 (Fed. Cir. 1995).


Mr. Van Blarigan and Sandia Corporation

       Mr. Rozenblat argues that the district court erred in dismissing his declaratory

judgment action against Mr. Van Blarigan and Sandia Corporation for lack of an "actual



05-1556                                      3
controversy." Mr. Rozenblat states that his controversy with Mr. Van Blarigan and Sandia

Corporation lies in the fact that the '519 patent is invalid because it was derived from his

original work. Mr. Van Blarigan and Sandia respond that there is no controversy that will

support jurisdiction under the Declaratory Judgment Act, because there have been no

allegations of infringement or threats of infringement, nor of any activity that could

conceivably constitute infringement.

       A district court only has subject matter jurisdiction over a declaratory judgment

action when there is an "actual controversy." 28 U.S.C. §2201(a) (1994); BP Chems. Ltd.

v. Union Carbide Corp., 4 F.3d 975, 978 (Fed. Cir. 1993). "In general, the presence of an

'actual controversy' within the meaning of the statute depends on 'whether the facts

alleged, under all the circumstances, show that there is a substantial controversy, between

parties having adverse legal interests, of sufficient immediacy and reality to warrant the

issuance of a declaratory judgment.'" EMC Corp. v. Norand Corp., 89 F.3d 807, 810 (Fed.

Cir. 1996) (quoting Md. Cas. Co. v. Pac. Coal & Oil Co., 312 U.S. 270, 273 (1941)). In

dismissing Mr. Rozenblat's action, the district court observed that:

       In the instant action, Rosenblat has not alleged that the Sandia Defendants
       made any threat to Rosenblat that they might bring a patent infringement suit
       against him. There is not any allegation in the complaint of any
       communications between Rosenblat and the Sandia Defendants. Rosenblat
       has not alleged that he is engaged in any activity that could be deemed
       infringement of the 519 Patent. Neither has Rosenblat alleged that he
       intends to pursue the necessary measures in order to engage in such
       activity. Therefore, we grant the Sandia Defendants' motion to dismiss for
       lack of subject matter jurisdiction.

Rozenblat, 2005 U.S. Dist. LEXIS 9583, at *4. We agree that Mr. Rozenblat has not

alleged a controversy of sufficient "immediacy and reality" to warrant the issuance of a

declaratory judgment. Mr. Rozenblat has not explained what present harm, if any, he faces


05-1556                                      4
in the absence of a judgment of invalidity. Precedent holds that a declaratory judgment of

invalidity is generally appropriate where the plaintiff is producing or intends to produce an

allegedly infringing product and the patentee's conduct has created "an objectively

reasonable apprehension on the part of the plaintiff that the patentee will initiate suit if the

activity in question continues." EMC Corp., 89 F.3d at 811 (discussing two-part test for

determining whether an actual controversy exists in suits requesting a declaration of patent

invalidity). In due consideration of all the circumstances of this case, the district court was

correct in holding that Mr. Rozenblat had not established jurisdiction under the Declaratory

Judgment Act. See Minnesota Mining & Mfg. Co. v. Norton Co., 929 F.2d 670, 673 (Fed.

Cir. 1991) ("In promulgating the Declaratory Judgment Act, Congress intended to prevent

avoidable damages from being incurred by a person uncertain of his rights and threatened

with damage by delayed adjudication.")

       Mr. Rozenblat argues that his claim is not merely an assertion of invalidity, but that

he also seeks a determination of entitlement to the invention, based on the priority of his

earlier inventive work documented in Patent application 08/159,920 and in various

publications. However, Mr. Rozenblat has not shown that his inventive work resulted in an

issued patent, such that his claim could be interpreted as seeking to initiate an interference

action in the district court under 35 U.S.C. §291 (the "owner of an interfering patent may

have relief against the owner of another by civil action, and the court may adjudge the

question of the validity of any of the interfering patents, in whole or in part"). Nor does the

record show that Mr. Rozenblat attempted to provoke an interference between his

application and the '519 patent, or that he sought reexamination of the '519 patent.

Recognizing Mr. Rozenblat's arguments that the '519 patent is "derived" from his "original


05-1556                                        5
published intellectual work" and that the ‘519 patent is "anticipated," not "new," and

therefore "unpatentable," his remedy lies in the PTO.

       The district court also correctly held in the alternative that dismissal was appropriate

for lack of personal jurisdiction, on the basis that Mr. Van Blarigan and Sandia were not

shown to have "continuous and systematic" contacts with Illinois sufficient to establish

general personal jurisdiction. See Helicopteros Nacionales de Colombia, S.A. v. Hall, 466

U.S. 408, 414-16 (1984); Silent Drive, Inc. v. Strong Indus., Inc., 326 F.3d 1194, 1200 (Fed.

Cir. 2003) (general personal jurisdiction "requires that the defendant have 'continuous and

systematic' contacts with the forum state"). Nor did Mr. Rozenblat establish that these

defendants had connections related to this action sufficient to establish specific personal

jurisdiction. Mr. Rozenblat did not show that their activities fell within the scope of the

Illinois Long Arm Statute, 735 Ill. Comp. Stat. 5/2-209(c), nor that they had sufficient

"minimum contacts" to support a finding of personal jurisdiction consistent with the Due

Process Clause of the Fourteenth Amendment. See World-Wide Volkswagen Corp. v.

Woodson, 444 U.S. 286, 291 (1980). Mr. Rozenblat argued before the district court that

personal jurisdiction was established because these parties appeared in that court in

another action previously filed by Mr. Rozenblat; however, the district court correctly

observed that the prior appearance did not necessarily waive the personal jurisdiction

requirement in future actions, nor constitute related business conduct within the jurisdiction.

       Mr. Rozenblat further argues that the district court erred in dismissing his suit without

the assistance of expert testimony, and cites in support of this argument Federal Rule of

Civil Procedure 26(b)(4) (discussing the use of experts at trial), and Federal Rule of

Evidence 706 (the court may appoint an expert witness to assist it); however, Mr.


05-1556                                        6
Rozenblat has not explained how the district court abused its discretion in declining to

consult an expert on the jurisdictional issues here presented. See Kumho Tire Co. v.

Carmichael, 526 U.S. 137, 152 (1999) ("a court of appeals is to apply an

abuse-of-discretion standard when it 'reviews a trial court's decision to admit or exclude

expert testimony'") (quoting General Electric Co. v. Joiner, 522 U.S. 136, 138-39 (1997)).

We discern no such abuse of discretion in this case.


The Patent and Trademark Office

       Mr. Rozenblat further asserts error in the district court's dismissal of his qui tam

claim against the PTO. Mr. Rozenblat states that this suit is brought on behalf of the

government, as well as himself, to correct the PTO's error in granting the '519 patent. The

PTO responds that the district court was correct to dismiss this complaint on any of the

three grounds identified in its opinion: for lack of a waiver of sovereign immunity; for lack of

an actual controversy; and for a failure to exhaust the administrative remedy of filing for

reexamination of the '519 patent.

       We agree with the district court that Mr. Rozenblat has failed to establish a

controversy of sufficient immediacy and reality to support a declaratory judgment action,

and has not shown any other viable ground for bringing suit against the PTO. We also

agree that such a suit would be barred for failure to pursue the available administrative

remedy of patent reexamination. See McKart v. United States, 395 U.S. 185, 193 (1969)

("The doctrine [of exhaustion of administrative remedies] provides 'that no one is entitled to

judicial relief for a supposed or threatened injury until the prescribed administrative remedy

has been exhausted'") (quoting Myers v. Bethlehem Shipbuilding Corp., 303 U.S. 41, 50-51



05-1556                                        7
(1938)). Congress has established an administrative procedure whereby the public can

challenge a patent at the PTO by requesting reexamination. See 35 U.S.C. §§301-318. Ex

parte patent reexamination is authorized by §302, which permits "any person at any time"

to request the reexamination of a patent. See also 35 U.S.C. §311(a) (requests for inter

partes reexamination may be made by "[a]ny third-party requester at any time"). Mr.

Rozenblat has not stated that he has exhausted the remedy of requesting that the PTO

reexamine the '519 patent; thus, the district court correctly dismissed his claim against the

PTO on this basis. See generally Patlex Corp. v. Mossinghoff, 758 F.2d 594, 601 (Fed. Cir.

1985) (prior to the enactment of the reexamination statute, "administrative review could not

be achieved other than at the initiative of the patentee").

       We have fully examined Mr. Rozenblat's remaining arguments and find them to be

without merit. Accordingly, we affirm.




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