NOTE: This disposition is nonprecedential. 

United States Court of Appeals 

for the Federal Circuit 

__________________________ 

PERSONALIZED MEDIA COMMUNICATIONS, 

L.L.C., 

Plaintiff/Counterclaim DefendantAppellee, 

v. 

SCIENTIFIC-ATLANTA, INC. AND POWERTV, INC., 

Defendants, 

v. 

TVG-PMC, INC., STARSIGHT TELECAST, INC., 

AND GEMSTAR-TV GUIDE INTERNATIONAL, INC., 

Counterclaimants-Appellants. 

__________________________ 

2011-1466 

__________________________ 

Appeal from the United States District Court for the 

Northern District of Georgia in Case No. 02-CV-0824, 

Judge Charles A. Pannell, Jr. 

_________________________ 

Decided: August 23, 2012 

_________________________ 

ARUN S. SUBRAMANIAN, Susman Godfrey LLP, of New 

York, New York, argued for plaintiff/counterclaim defen-
PERSONALIZED MEDIA v. SCIENTIFIC-ATL 2

dant-appellee. With him on the brief were NATHAN M.

REHN, and STEPHEN D. SUSMAN. 

DARYL L. JOSEFFER, King & Spalding, of Washington, 

DC, argued for counterclaimant-appellant. With him on 

the brief were ADAM M. CONRAD, of Charlotte, North 

Carolina, and JOSEPH C. SHARP, Ashe, Rafuse, & Hill, 

LLP, of Atlanta, Georgia. 

__________________________ 

Before RADER, Chief Judge, MAYER and DYK, Circuit 

Judges. 

Opinion for the court filed by Chief Judge RADER. Concurring opinion filed by Circuit Judge MAYER. 

RADER, Chief Judge. 

This appeal comes from a patent infringement suit between Personalized Media Communications, LLC (“PMC”) 

and several defendants in the Northern District of Georgia (“the Georgia litigation”). Appellants (“Gemstar”) 

were third-party counterclaimants in the Georgia litigation. Gemstar claimed the Georgia litigation breached a 

license agreement between PMC and Gemstar granting 

Gemstar the exclusive right to litigate infringement of the 

patents-in-suit. Gemstar also requested a declaratory 

judgment on the scope of the licensing agreement. 

The district court dismissed Gemstar’s declaratory 

judgment claim as moot. It then found it had original, 

federal question patent jurisdiction over Gemstar’s breach 

of contract claim. It concluded PMC did not breach the 

agreement because Gemstar could not show damages. 

Gemstar appealed. 

This court reverses the decision on original jurisdiction over the contract claim and agrees that the district 

court could properly decline to exercise supplemental 
3 PERSONALIZED MEDIA v. SCIENTIFIC-ATL

jurisdiction over that claim. Because the parties are now 

engaged in new litigation over the issues raised in the 

declaratory judgment action, this court affirms the dismissal of that claim. 

I. 

PMC is the assignee of a group of United States patents called “the Harvey Patents.” The Harvey Patents 

disclose and claim numerous inventions relating to the 

distribution and control of media and programming 

content. Gemstar’s business consists primarily of providing interactive programming guide (“IPG”) technology to 

television set-top box manufacturers. These interactive 

programming guides allow television viewers to locate 

and view programming and may provide other features 

such as parental controls, pay-per-view, and browse 

functionalities. 

In 2000, Gemstar and PMC signed a license agreement granting Gemstar “the exclusive right, but not the 

obligation to enforce” the Harvey Patents “against any 

Person operating in the [IPG] Field.” J.A. 2590. The 

license remains in effect. 

On March 2, 2002, PMC sued Scientific-Atlanta for infringement of the Harvey Patents resulting from the 

“unauthorized manufacture, use, sale, offer to sell and/or 

importation . . . of products, services and/or systems that 

fall within the scope of [PMC’s] patented automated 

broadcast control technology, and [PMC’s] patented single 

processing apparatuses and methods.” J.A. 1291. In 

describing the Harvey Patents, PMC’s complaint represented that the Harvey Patents involved “technologies 

that are used to automate the receipt, storage, scheduling 

and rebroadcast of various forms of television programming.” J.A. 1297. In response, Scientific-Atlanta filed 

counterclaims against Gemstar on the grounds that 
PERSONALIZED MEDIA v. SCIENTIFIC-ATL 4

Gemstar holds “perpetual and exclusive licenses in the 

PMC patents in suit and the disposition of [PMC’s suit] 

may impede [Gemstar’s] ability to protect that interest 

while leaving the [Scientific-Atlanta] subject to a substantial risk of incurring double, multiple, or other inconsistent obligations.” J.A. 1435. 

In February 2003, Gemstar filed cross-claims against 

PMC for breach of contract and declaratory judgment of 

its rights under the license and the Harvey Patents. For 

the declaratory judgment, Gemstar stated that based on 

the suit between PMC and Scientific-Atlanta, it appears 

“PMC claims that it has retained the exclusive right to 

bring suit for infringement of the Harvey Patents” but 

that “PMC’s assertion of rights in the Harvey Patents . . . 

falls (at least in part) within Gemstar’s exclusive rights 

under the Harvey Patents.” J.A. 1372–73. Gemstar 

alleged a substantial dispute between PMC and itself 

regarding, inter alia, “the extent of the parties’ respective 

rights under the Harvey Patents.” J.A. 1373. Gemstar 

specifically sought a declaration of the respective rights of 

PMC and Gemstar with respect to the Harvey Patents. 

Id. Gemstar also requested injunctive relief to prevent 

PMC from prosecuting its current action against Scientific-Atlanta and from “further interfering with Gemstar’s 

right to enforce and/or defend the Harvey Patents. . . .” 

J.A. 1374; 1391. 

With respect to the breach of contract claims, Gemstar sought “damages arising naturally from or reasonably foreseeable as a result of PMC’s breach includ[ing], 

but not necessarily limited to, all the expenses and costs 

that Gemstar has incurred as a result of PMC’s wrongfully asserting against Scientific-Atlanta . . . claims for 

patent infringement . . . .” J.A. 1446. While Gemstar also 

filed counterclaims against Scientific-Atlanta for infringement of the Harvey Patents, Gemstar and Scien-
5 PERSONALIZED MEDIA v. SCIENTIFIC-ATL

tific-Atlanta settled all claims against one another in 

June 2005. 

Following a three-year stay of the Georgia litigation 

for patent reexamination proceedings before the United 

States Patent and Trademark Office, the trial court held a 

three-day bench trial on Gemstar’s claims against PMC. 

Following the bench trial, PMC moved to dismiss Gemstar’s declaratory judgment claim as moot because of 

Gemstar’s settlement with Scientific-Atlanta. In December 2010, the trial court granted PMC’s motion. The trial 

court also declined to exercise supplemental jurisdiction 

over Gemstar’s remaining claims and found that Gemstar 

was no longer an appropriate party to the case. 

Gemstar moved for reconsideration of its dismissal. 

The trial court refused to reconsider Gemstar’s declaratory judgment and injunctive relief claims. However, with 

respect to its jurisdiction over Gemstar’s breach of contract counterclaims, it concluded that it had original, 

federal question jurisdiction under U.S. Valves, Inc. v. 

Dray, 212 F.3d 1368 (Fed. Cir. 2000). The trial court 

rejected the merits of Gemstar’s breach of contract claims 

because Gemstar had not shown the necessary element of 

damages. The trial court entered a final judgment, and 

Gemstar made a timely appeal to this court. This court 

has jurisdiction under 28 U.S.C. § 1295. 

Following Gemstar’s appeal, Gemstar was joined to 

another patent infringement suit between PMC and 

several other parties (“the Texas litigation”). According to 

the trial court in the Texas litigation, Gemstar is a necessary party because the litigation involves the scope of 

Gemstar’s license with PMC and Gemstar needs to protect its interest in the license. Personalized Media 

Commc’ns, LLC v. Echostar Corp., No. 2:08-CV-70-RSP 

(E.D. Tex., July 10, 2012). 
PERSONALIZED MEDIA v. SCIENTIFIC-ATL 6

II. 

This court reviews a district court’s determination as 

to original patent law jurisdiction without deference. HIF 

Bio, Inc. v. Yung Shin Pharm. Indus., 600 F.3d 1347, 1352 

(Fed. Cir. 2010). While the court reviews a district court’s 

determination as to mootness without deference, CAMP 

Legal Defense Fund, Inc. v. City of Atlanta, 451 F.3d 1257, 

1268 (11th Cir. 2006), the district court’s ultimate conclusion to deny declaratory judgment jurisdiction and 

whether to exercise supplemental jurisdiction contains an 

element of discretion, Green v. Mansour, 474 U.S. 64, 71 

(1985) (“[T]he declaratory judgment statute is an enabling 

Act, which confers a discretion on the courts rather than 

an absolute right upon the litigant.”); Carlsbad Tech., Inc. 

v. HIF Bio, Inc., 556 U.S. 635, 639 (2009) (stating a district court’s decision of whether to exercise supplemental 

jurisdiction is “purely discretionary”). 

III. 

28 U.S.C. § 1338 gives district courts original jurisdiction over “any civil action arising under any Act of Congress relating to patents.” There is no original 

jurisdiction unless the “right to relief necessarily depends 

on resolution of a substantial question of federal patent 

law.” Christianson v. Colt Indus. Operation Corp., 486 

U.S. 800, 814–15 (1988). See, e.g., U.S. Valves, Inc., 212 

F.3d at 1372 (finding jurisdiction over breach of contract 

claim because whether the asserted patents covered the 

licensor’s products was an element of proving breach); 

HIF Bio, Inc. v. Yung Shin Pharm. Indus., 600 F.3d 1347, 

1352 (Fed. Cir. 2010) (finding jurisdiction over slander of 

title claim because plaintiffs’ allegation that defendants’ 

public statements of inventorship are false requires a 

determination of true inventorship); Bd. of Regents, Univ. 

of Tex. v. Nippon Tel. & Tel. Corp., 414 F.3d 1358, 1363–
7 PERSONALIZED MEDIA v. SCIENTIFIC-ATL

64 (Fed. Cir. 2005) (noting that not all breach of contract 

actions involving patents are claims arising under federal 

patent law). 

Here, the district court erroneously determined it had 

original patent jurisdiction over Gemstar’s breach of 

contract claim. Gemstar’s claim did not involve inventorship, infringement, validity, or enforceability of the Harvey Patents. Gemstar has not accused PMC of any direct 

or indirect infringement of the Harvey Patents. The sole 

issue is the scope of the IPG field, as defined by the licensing agreement between Gemstar and PMC, over which 

Gemstar was given the exclusive right to assert the 

Harvey Patents in suits against third parties. That scope 

does not depend on patent claim scope. Thus, the district 

court erred in finding original patent law jurisdiction. 

Because the district court erred in finding it had 

original patent law jurisdiction, this court vacates the 

district court’s decision on the merits of the breach of 

contract claim. As discussed below we also agree that the 

district court could properly decline to exercise supplemental jurisdiction over that claim. 

IV. 

In 2010, the Georgia district court dismissed Gemstar’s declaratory judgment claim as moot and declined to 

exercise supplemental jurisdiction over the contract 

claims. Declaratory judgment and supplemental jurisdiction determinations have a discretionary element. See

Carlsbad Tech., Inc., 556 U.S. at 639; Green, 474 U.S. at 

71. Regardless of any error that might have been committed by the district court, discretion now counsels against 

exercising jurisdiction over Gemstar’s claims. 

Under the supplemental jurisdiction statute, a district 

court “may decline to exercise supplemental jurisdiction” 
PERSONALIZED MEDIA v. SCIENTIFIC-ATL 8

if “the district court has dismissed all claims over which it 

has original jurisdiction.” 28 U.S.C. § 1367(c). All such 

original jurisdiction claims will now have been dismissed. 

Nonetheless, Gemstar argues that it would be an abuse of 

discretion to decline to exercise supplemental jurisdiction 

because substantial resources have been invested in this 

case. While we agree that a district court should consider 

judicial economy when deciding whether to exercise 

supplemental jurisdiction, other factors weigh in favor of 

dismissal in this case.1

On July 10, 2012, the Eastern District of Texas ordered that Gemstar be joined to the Texas litigation. The 

Texas court reasoned “the scope and meaning of the 

license agreement between Personalized Media and 

Gemstar will be at issue,” and a ruling in the case “may 

as a practical matter impair Gemstar’s ability to protect 

its interest in the future sublicensing of the asserted 

patents.” Personalized Media Commc’ns, LLC, slip op. at 

6. 

Gemstar is currently pursuing its claims against PMC 

in the context of the Texas litigation. The Texas litigation 

 1 We note that under the supplemental jurisdiction 

statute, the statute of limitations has not yet run on 

Gemstar’s breach of contract claim. See 28 U.S.C. § 1367 

(“The period of limitations for any claim asserted [based 

on supplemental jurisdiction] . . . shall be tolled while the 

claim is pending and for a period of 30 days after it is 

dismissed unless State law provides for a longer tolling 

period.”); Myers v. Cnty. of Lake, Ind., 30 F.3d 847, 848–

49 (7th Cir. 1994) (“Section 1367(d), giving the plaintiff at 

least 30 days to re-file in state court after a federal court 

declines to exercise supplemental jurisdiction, removes 

the principal reason for retaining a case in federal court 

when the federal claim belatedly disappears.”). Thus, 

Gemstar remains free to re-file its contract claim in an 

appropriate venue. 
9 PERSONALIZED MEDIA v. SCIENTIFIC-ATL

will achieve the same result Gemstar sought in the longdead Georgia litigation: a decision on the scope and meaning of the license agreement between PMC and Gemstar, 

and, if appropriate, damages for breach of contract. 

Additionally, Gemstar did not choose Georgia as the 

forum for its declaratory judgment case because it was a 

third party brought into the Georgia litigation. Thus, 

allowing Gemstar to proceed with its case in Texas does 

not impair a plaintiff’s choice of forum. Cf. Voda v. Cordis 

Corp., 476 F.3d 887, 904 (Fed. Cir. 2007) (noting that the 

plaintiff’s choice of forum is a factor in considering the 

exercise of supplemental jurisdiction). 

The Texas litigation is not simply an infringement 

litigation between PMC and Gemstar but involves the 

assertion of independent claims not involved in the Georgia action, and staying the Texas action would therefore 

be problematic. This is not a situation in which the 

Georgia and Texas cases can comfortably proceed at the 

same time. Allowing both claims to go forward would 

create duplicate litigation on the same legal issues – one 

in Texas, one in Georgia. This potentially would expose 

Gemstar and PMC to inconsistent interpretations of their 

license agreement and impair their ability to enforcement 

the agreement. Such duplicate litigation would also 

defeat judicial economy as it would task two courts with 

deciding the same issue. 

Simply put, any error in the trial court’s decision to 

dismiss Gemstar’s declaratory judgment action is harmless because circumstances have outpaced this litigation. 

Palmer v. Hoffman, 318 U.S. 109, 116 (1943) (noting that 

setting aside a judgment because of an erroneous ruling 

requires a showing of prejudice). 
PERSONALIZED MEDIA v. SCIENTIFIC-ATL 10

V. 

The district court erred in finding original patent jurisdiction over Gemstar’s contract claims but did not err 

in declining to exercise supplemental jurisdiction. As 

such, this court reverses the finding of jurisdiction and 

vacates the district court’s decision on the merits of Gemstar’s contract claims. This court affirms the district 

court’s dismissal of Gemstar’s declaratory judgment claim 

because any error in its decision is rendered harmless by 

Gemstar’s participation in the Texas litigation. 

AFFIRMED-IN-PART AND REVERSED-ANDVACATED-IN-PART 
NOTE: This disposition is nonprecedential. 

United States Court of Appeals 

for the Federal Circuit 

__________________________ 

PERSONALIZED MEDIA COMMUNICATIONS, 

L.L.C., 

Plaintiff/Counterclaim Defendant-Appellee, 

v. 

SCIENTIFIC-ATLANTA, INC. AND POWERTV, INC., 

Defendants, 

v. 

TVG-PMC, INC., STARSIGHT TELECAST, INC., 

AND GEMSTAR-TV GUIDE INTERNATIONAL, INC., 

Counterclaimants-Appellants. 

__________________________ 

2011-1466 

__________________________ 

Appeal from the United States District Court for the 

Northern District of Georgia in case no. 02-CV-0824, 

Judge Charles A. Pannell, Jr. 

__________________________ 

MAYER, Circuit Judge, concurring. 

I agree that the district court had no original federal 

question jurisdiction over the breach of contract claim 

brought by Gemstar-TV Guide International, Inc. (“Gemstar”) against Personalized Media Communications, 

L.L.C. (“PMC”). I further agree that because the scope of 
PERSONALIZED MEDIA v. SCIENTIFIC-ATL 2

the licensing agreement between Gemstar and PMC will 

be adjudicated in other proceedings, see Personalized 

Media Commc’ns, L.L.C. v. Echostar Corp., No. 2:08-CV70-RSP, slip op. at 6 (E.D. Tex. July 10, 2012), exercising 

jurisdiction over Gemstar’s declaratory judgment claim 

would “defeat judicial economy as it would task two courts 

with deciding the same issue,” ante at 8. 

I do not, however, subscribe to the majority’s intimation of error in the trial court’s original decision to dismiss 

Gemstar’s declaratory judgment claim as moot. The 

subject matter of the litigation before the district court 

was whether Scientific-Atlanta, Inc. (“Scientific”) infringed U.S. Patent Nos. 4,694,490, 4,704,725, 4,965,825, 

5,109,414, 5,233,654, 5,335,277, and 5,887,243 (collectively “the Harvey patents”). All issues related to the 

alleged infringement were rendered moot when Scientific 

entered into settlement and licensing agreements with 

both Gemstar and PMC. Because Gemstar entered into a 

comprehensive settlement agreement with Scientific 

related to its rights under the Harvey patents, it had no 

continuing interest in the case and the trial court correctly dismissed its declaratory judgment claim. See

Socialist Lab. Party v. Gilligan, 406 U.S. 583, 586 (1972) 

(“It is axiomatic that the federal courts do not decide 

abstract questions posed by parties who lack a personal 

stake in the outcome of the controversy.” (citations and 

internal quotation marks omitted)); Gould v. Control 

Laser Corp., 866 F.2d 1391, 1392 (Fed. Cir. 1989) (“Settlement moots an action.”). 

Gemstar’s effort to obtain a “declaration of its rights” 

in the Harvey patents is a poorly-disguised attempt to 

obtain an advisory opinion on the scope of its licensing 

agreement with PMC. Gemstar has settled its dispute 

with Scientific, and any dispute Gemstar has with PMC 

over the scope of their licensing agreement is too remote 
3 PERSONALIZED MEDIA v. SCIENTIFIC-ATL

and speculative to support the exercise of declaratory 

judgment jurisdiction. A patent licensee is not entitled to 

turn to the federal courts for an adjudication of its rights 

under a license agreement until such time as there is an 

actual and concrete dispute over the scope of those rights. 

See MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118, 

127 (2007) (declaratory judgment jurisdiction is available 

only where the dispute is “definite and concrete” (citations 

and internal quotation marks omitted)). Gemstar’s vague 

allegation that its hypothetical relationships with unnamed “prospective licensees” might be damaged because 

of uncertainties over the scope of its licensing agreement 

with PMC, is not the type of “specific live grievance,” 

Golden v. Zwickler, 394 U.S. 103, 110 (1969), necessary to 

support the exercise of declaratory judgment jurisdiction. 

See Benitec Australia, Ltd. v. Nucleonics, Inc., 495 F.3d 

1340, 1349 (Fed. Cir. 2007) (concluding that there was “no 

evidence of a justiciable controversy” where a declaratory 

judgment plaintiff’s potential future expansion plans were 

“vaguely defined”); Microchip Tech. Inc. v. Chamberlain 

Group, Inc., 441 F.3d 936, 943 (Fed. Cir. 2006) (“Without 

an underlying legal cause of action, any adverse economic 

interest that the declaratory plaintiff may have against 

the declaratory defendant is not a legally cognizable 

interest sufficient to confer declaratory judgment jurisdiction.”). Instead, as the trial court correctly concluded, 

because “Gemstar no longer ha[d] any stake in the patent 

dispute between PMC and [Scientific] . . . any ruling on 

Gemstar’s declaratory judgment claim would constitute 

an advisory opinion as to the rights that PMC and Gemstar have in the Harvey patents with respect to a hypothetical party.” Personalized Media Commc’ns, L.L.C. v. 

Scientific-Atlanta, Inc., No. 1:02-CV-824-CAP, slip. op. at 

4 (N.D. Ga. Dec. 14, 2010).