federal circuit jurisdiction has the supreme court made a mess of congress’ plan? laura kolb...

Federal Circuit Federal Circuit JurisdictionJurisdictionHas the Supreme Court made a Has the Supreme Court made a mess of Congress’ plan?mess of Congress’ plan?

Laura KolbNovember 1, 2005Roberta Morris’ Patent Law Seminar

Laura Kolb November 1, 2005Laura Kolb November 1, 2005

OutlineOutline

StatutesStatutes Cases: Cases: Christianson, Aerojet, VornadoChristianson, Aerojet, Vornado Who was most convincing?Who was most convincing? Post-Post-VornadoVornado cases cases Legislative solutionsLegislative solutions Judicial solutionsJudicial solutions


So this is what Congress has So this is what Congress has actually said…actually said…

28 U.S.C. § 1295 (2005)28 U.S.C. § 1295 (2005)enacted 1982, no relevant amendmentsenacted 1982, no relevant amendments§ 1295 Jurisdiction of the United States Court § 1295 Jurisdiction of the United States Court

of Appeals for the Federal Circuit of Appeals for the Federal Circuit (a) The United States Court of Appeals for the (a) The United States Court of Appeals for the

Federal Circuit shall have Federal Circuit shall have exclusive exclusive jurisdictionjurisdiction——

(1) of an appeal from a final decision of(1) of an appeal from a final decision of - a district court of the United - a district court of the United

States, States, -- the United States District Court for the District the United States District Court for the District

of the Canal Zone, the District Court of Guam, the District Court of of the Canal Zone, the District Court of Guam, the District Court of the Virgin Islands, or the District Court for the Northern Mariana the Virgin Islands, or the District Court for the Northern Mariana

IslandsIslands,, if the jurisdiction of that court was based, if the jurisdiction of that court was based,

in whole or in part, in whole or in part, on on section 1338section 1338 of this title of this title

except that a case involving a claim arising under any Act of except that a case involving a claim arising under any Act of Congress relating to copyrights, exclusive rights in mask Congress relating to copyrights, exclusive rights in mask works, or trademarks and no other claims under section works, or trademarks and no other claims under section 1338(a) shall be governed by sections 1291, 1292, and 1294 1338(a) shall be governed by sections 1291, 1292, and 1294 of this titleof this title..

28 U.S.C. § 1338 (2005)enacted 1948 based on 1911 statute, last amended 1999§ 1338 Patents, plant variety

protection, copyrights, mask works, designs, trademarks, and unfair competition

(a) The district courts shall have original jurisdiction of any civil actionarising under any Act of Congress relating to

- patents, - plant variety protection, - copyrights and - trademarks.

Such jurisdiction shall be exclusive of the courts of the states in

- patent, - plant variety protection and - copyright

cases

In other words, if a district court has jurisdiction because an action arises under patent law, the case goes to the Federal Circuit on appeal.


ChristiansonChristianson: The Supreme : The Supreme Court’s First ProclamationCourt’s First Proclamation

M-16 patents sort of at issueM-16 patents sort of at issue Anti-trust and tortious Anti-trust and tortious

interference claims; trade interference claims; trade secret counterclaimsecret counterclaim

D.Ct. says no trade secrets -D.Ct. says no trade secrets -patents invalid under patents invalid under § 112§ 112

Fed. Cir. and 7Fed. Cir. and 7thth Cir. both say Cir. both say they have no jurisdictionthey have no jurisdiction

No patent claimNo patent claim in the in the complaint, and complaint, and resolutionresolution of of claims did claims did notnot necessarilynecessarily requirerequire resolution of patent resolution of patent issueissue: no “arising under” the : no “arising under” the patent laws, and no Federal patent laws, and no Federal Circuit jurisdiction.Circuit jurisdiction.


A Finessed Interpretation? A Finessed Interpretation? The Federal Circuit in The Federal Circuit in AerojetAerojet

Fight involves ammunition Fight involves ammunition patentspatents

Infringement counterclaimInfringement counterclaim Fed. Cir. clearly feels need to Fed. Cir. clearly feels need to

explain/justify its jurisdiction explain/justify its jurisdiction over the caseover the case

What’s the argument? That a What’s the argument? That a counterclaim is pretty much counterclaim is pretty much the same as a claim?the same as a claim?

In later cases, Federal Circuit In later cases, Federal Circuit also took non-compulsory also took non-compulsory counterclaimscounterclaims


VornadoVornado: The Supreme Court’s : The Supreme Court’s Latest Word: “It Must ‘Arise Latest Word: “It Must ‘Arise Under’!”Under’!”

Spiral grill trade-dress Spiral grill trade-dress case with patent case with patent counterclaimcounterclaim

Vornado had lost identical Vornado had lost identical trade dress argument in trade dress argument in 1010thth Circuit against Circuit against another partyanother party

Dist. Ct. says no matter Dist. Ct. says no matter where appeal goes, where appeal goes, collateral estoppel appliescollateral estoppel applies

Supreme Court decides Supreme Court decides to say where appeal goesto say where appeal goes


What we ThinkWhat we Think

Scalia (3)Scalia (3) Have to stick with well-pleaded complaint rule until Congress Have to stick with well-pleaded complaint rule until Congress

changes the lawchanges the law Defendant shouldn’t be able to get removal by a counterclaimDefendant shouldn’t be able to get removal by a counterclaim

Stevens (1)Stevens (1) Congress must speak unambiguously to change thingsCongress must speak unambiguously to change things

Ginsburg (2)Ginsburg (2) Congress intended jurisdiction based on claimsCongress intended jurisdiction based on claims uniformity in patent decisions most importantuniformity in patent decisions most important

Markey (4)Markey (4) Uniformity trumps plaintiff’s right to chose forumUniformity trumps plaintiff’s right to chose forum Distinction between claims and counterclaims is meaninglessDistinction between claims and counterclaims is meaningless It shouldn’t matter who sues firstIt shouldn’t matter who sues first


Consequences I: State Court Consequences I: State Court Hears Copyright Case (Hears Copyright Case (GreenGreen))

Copyright counterclaim, Copyright counterclaim, Fed. Ct. won’t take, re-Fed. Ct. won’t take, re-written as state lawwritten as state law

Ind. Sup. Ct. says (1) Ind. Sup. Ct. says (1) federal preemption and federal preemption and (2) state court can hear it (2) state court can hear it an disguised copyright an disguised copyright claim under claim under VornadoVornado

No record of state court No record of state court hearing hearing patentpatent counterclaim… yet.counterclaim… yet.


Consequences II: 11th Circuit Says Consequences II: 11th Circuit Says Federal Circuit Merely Persuasive Federal Circuit Merely Persuasive ((TelecomTelecom))

Independent repair Independent repair companies bring anti-trust companies bring anti-trust suit and get in troublesuit and get in trouble

Patent infringement Patent infringement counterclaimcounterclaim

Fed. Cir. transfers appeal to Fed. Cir. transfers appeal to 11th Cir.11th Cir.

11th Cir. says Fed. Cir. 11th Cir. says Fed. Cir. antitrust-and-patent decision antitrust-and-patent decision merely persuasive, cites no merely persuasive, cites no authority in upholding jury authority in upholding jury finding of infringementfinding of infringement

Sorry no patent figure – couldn’t find patent # (and software patent probably wouldn’t have anything interesting to show anyway)


Consequences III: Regional Circuit Consequences III: Regional Circuit Follows Federal Circuit (Follows Federal Circuit (SchinzingSchinzing))

Wheelchair washing Wheelchair washing machine!machine!

License dispute, License dispute, counterclaim for counterclaim for declaration of invalidity declaration of invalidity (inventorship problems, (inventorship problems, among others)among others)

Transferred to Fed. Ct. Transferred to Fed. Ct. (was this legit?)(was this legit?)

8th Circuit, without 8th Circuit, without explanation, adopts Fed. explanation, adopts Fed. Cir. precedent on patent Cir. precedent on patent issuesissues


Solutions I: Congress Solutions I: Congress Should Do Something!Should Do Something!

Amend Amend § § 13381338 Explicitly include Explicitly include

counterclaims (5 variations)counterclaims (5 variations) Explicitly include defensesExplicitly include defenses

Amend Amend § 1295§ 1295 Define “in part” to include Define “in part” to include

compulsory counterclaimscompulsory counterclaims Extend jurisdiction to include Extend jurisdiction to include

cases when “any substantive cases when “any substantive issue related to patents is issue related to patents is decided”decided”

§ 1338, amended 2005


Solutions II: Regional Circuits Solutions II: Regional Circuits Should Do Something!Should Do Something!

Regional Circuits should Regional Circuits should follow Federal Circuit on follow Federal Circuit on substantive patent law if substantive patent law if Federal Circuit decisions Federal Circuit decisions are consistent, but are consistent, but seriously consider seriously consider minority views on the minority views on the Federal Circuit when Federal Circuit when they existthey exist

Anyone willing to argue Anyone willing to argue full deference or full full deference or full independence?independence?

Federal Circuit precedent

Regional Circuit

federal circuit jurisdiction has the supreme court made a mess of congress’ plan? laura kolb...

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