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 t he United States District Court for the Northern District of Illinois dismissing his cl aim against Sandia Corporation and Peter Van Blarigan for lack of subject matter and pers onal jurisdiction, and dismissing his claim05-1556 2 against the Patent and Trademark Office ("PTO") for lack of subject matter jurisdiction. 1
We affirm

. BACKGROUND Mr. Rozenblat brought this ac tion 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 gener ating 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 Corporati on, 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 def inition 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 . . . .

1 Rozenblat v. Sandia Corp. , No. 04-C-3289, 2005 U.S. Dist. LEXIS 9583 (May 2, 2005). (emphasis in original). The district court dismissed the claim against Mr. Van Blarigan and Sandia Corporation for lack of subject matte r jurisdiction because Mr. Rozenblat had not established an actual controve rsy with these defendants. Th e court observed that Mr. Rozenblat had not alleged that there had been any threat of a patent in fringement 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. T he court also held in the alternative05-1556 3 that even if there were subject matter jurisd iction, 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 wit h Illinois to establis h general or specific personal jurisdiction. The court dismissed the claim against the PT O for lack of subject matter jurisdiction, observing that Mr. Rozenblat had not pointed to any statut e indicating that Congress intended to waive sovereign immunity to allow his suit, that his cl aim 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 t he administrative remedy of requesting patent reexamination. On May 10, 2005 Mr. Rozenblat timely but in correctly 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) (t he 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 Blar igan and Sandia Corporati on, 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 c ourt erred in dismissing his declaratory judgment action against Mr. Van Blarigan and S andia Corporation for lack of an "actual05-1556 4 controversy." Mr. Rozenblat states that his controversy with Mr. Van Blarigan and Sandia Corporation lies in the fact t hat the '519 patent is invalid because it was derived from his original work. Mr. Van Blarigan and Sandia re spond 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 cont roversy." 28 U.S.C. §2201(a) (1994); BP Chems. Ltd. v. Union Carbide Corp. , 4 F.3d 975, 978 (Fed. Cir. 1993). "I n general, the presence of an 'actual controversy' withi n the meaning of the statut e depends on 'whether the facts alleged, under all the circumstances, show that there is a substantial controversy, between parties having adverse legal interests, of su fficient 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 a llegation in the complaint of any communications between Rosenblat and t he Sandia Defendants. Rosenblat has not alleged that he is engaged in any activity that could be deemed infringement of the 519 Patent. Ne ither has Rosenblat alleged that he intends to pursue the necessary m easures 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 "immedia cy and reality" to warrant the issuance of a declaratory judgment. Mr. Rozenblat has not ex plained what present harm, if any, he faces05-1556 5 in the absence of a judgment of invalidity. Precedent holds t hat a declaratory judgment of invalidity is generally appropriate where the plai ntiff is producing or in tends 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 init iate suit if the activity in question continues." EMC Corp. , 89 F.3d at 811 (discussi ng two-part test for determining whether an actual cont roversy exists in suits requesting a declaration of patent invalidity). In due consideration of all the circ umstances 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 t he Declaratory Judgment Act, Congress intended to prevent avoidable damages from being incurred by a pers on 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 Pa tent application 08/159,920 and in various publications. However, Mr. Roz enblat has not shown that his in ventive work resulted in an issued patent, such that his claim could be interpre ted as seeking to init iate 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 whol e or in part"). Nor does the record show that Mr. Rozenblat attemp ted to provoke an interference between his application and the '519 patent, or that he sought reexami nation of the '519 patent. Recognizing Mr. Rozenblat's argum ents that the '519 patent is " derived" from his "original05-1556 6 published intellectual work" and that the ‘519 patent is "anticipat ed," not "new," and therefore "unpatentable," his remedy lies in the PTO. The district court also correctly held in t he 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 syst ematic" 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 "require s that the defendant ha ve 'continuous and systematic' contacts with the fo rum 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 I ll. 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 dist rict court that personal jurisdiction was established because these parties appeared in that court in another action previously filed by Mr. Rozenbl at; however, the district court correctly observed that the prior appearanc e 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 dismi ssing his suit without the assistance of expert testim ony, 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 7 Rozenblat has not explained how the district court abused its discretion in declining to consult an expert on the jurisdic tional issues here presented. See Kumho Tire Co. v. Carmichael , 526 U.S. 137, 152 (1999) ("a cour t of appeals is to apply an abuse-of-discretion standard when it 'reviews a trial court's de cision 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 t hat 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 corre ct 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 ex haust 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 realit y to support a declaratory judgment action, and has not shown any other vi able ground for bringing suit against the PTO. We also agree that such a suit would be barred for fa ilure to pursue the av ailable administrative remedy of patent reexamination. See McKart v. United States , 395 U.S. 185, 193 (1969) ("The doctrine [of exhaustion of administrative reme dies] 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, 50-5105-1556 8 (1938)). Congress has established an adminis trative procedure wher eby the public can challenge a patent at the PTO by requesting reexamination. See 35 U.S.C. §§301-318. Ex parte patent reexamination is aut horized 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 th ird-party requester at any time"). Mr. Rozenblat has not stated that he has exhaust ed 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 stat ute, "administrative review could not be achieved other than at the init iative of the patentee"). We have fully examined Mr. Rozenblat's re maining arguments and find them to be without merit. Accordingly, we affirm.