1. Federal Circuit Jurisdiction Has the Supreme Court made a mess of Congress’ plan? Laura Kolb November 1, 2005 Roberta Morris’ Patent Law Seminar

2. Laura Kolb November 1, 2005 Outline  Statutes  Cases: Christianson, Aerojet, Vornado  Who was most convincing?  Post-Vornado cases  Legislative solutions  Judicial solutions

3. Laura Kolb November 1, 2005 So this is what Congress has actually said… 28 U.S.C. § 1295 (2005) enacted 1982, no relevant amendments § 1295 Jurisdiction of the United States Court of Appeals for the Federal Circuit (a) The United States Court of Appeals for the Federal Circuit shall have exclusive jurisdiction— (1) of an appeal from a final decision of - a district court of the United States, - the United States District Court for the District of the Canal Zone, the District Court of Guam, the District Court of the Virgin Islands, or the District Court for the Northern Mariana Islands, if the jurisdiction of that court was based, in whole or in part, on section 1338 of this title except that a case involving a claim arising under any Act of Congress relating to copyrights, exclusive rights in mask works, or trademarks and no other claims under section 1338(a) shall be governed by sections 1291, 1292, and 1294 of 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 action arising 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.

4. Laura Kolb November 1, 2005 Christianson: The Supreme Court’s First Proclamation  M-16 patents sort of at issue  Anti-trust and tortious interference claims; trade secret counterclaim  D.Ct. says no trade secrets - patents invalid under § 112  Fed. Cir. and 7 th Cir. both say they have no jurisdiction  No patent claim in the complaint, and resolution of claims did not necessarily require resolution of patent issue: no “arising under” the patent laws, and no Federal Circuit jurisdiction.

5. Laura Kolb November 1, 2005 A Finessed Interpretation? The Federal Circuit in Aerojet  Fight involves ammunition patents  Infringement counterclaim  Fed. Cir. clearly feels need to explain/justify its jurisdiction over the case  What’s the argument? That a counterclaim is pretty much the same as a claim?  In later cases, Federal Circuit also took non-compulsory counterclaims

6. Laura Kolb November 1, 2005 Vornado: The Supreme Court’s Latest Word: “It Must ‘Arise Under’!”  Spiral grill trade-dress case with patent counterclaim  Vornado had lost identical trade dress argument in 10 th Circuit against another party  Dist. Ct. says no matter where appeal goes, collateral estoppel applies  Supreme Court decides to say where appeal goes

7. Laura Kolb November 1, 2005 What we Think  Scalia (3)  Have to stick with well-pleaded complaint rule until Congress changes the law  Defendant shouldn’t be able to get removal by a counterclaim  Stevens (1)  Congress must speak unambiguously to change things  Ginsburg (2)  Congress intended jurisdiction based on claims  uniformity in patent decisions most important  Markey (4)  Uniformity trumps plaintiff’s right to chose forum  Distinction between claims and counterclaims is meaningless  It shouldn’t matter who sues first

8. Laura Kolb November 1, 2005 Consequences I: State Court Hears Copyright Case (Green)  Copyright counterclaim, Fed. Ct. won’t take, re- written as state law  Ind. Sup. Ct. says (1) federal preemption and (2) state court can hear it an disguised copyright claim under Vornado  No record of state court hearing patent counterclaim… yet.

9. Laura Kolb November 1, 2005 Consequences II: 11th Circuit Says Federal Circuit Merely Persuasive (Telecom)  Independent repair companies bring anti-trust suit and get in trouble  Patent infringement counterclaim  Fed. Cir. transfers appeal to 11th Cir.  11th Cir. says Fed. Cir. antitrust-and-patent decision merely persuasive, cites no authority in upholding jury finding of infringement Sorry no patent figure – couldn’t find patent # (and software patent probably wouldn’t have anything interesting to show anyway)

10. Laura Kolb November 1, 2005 Consequences III: Regional Circuit Follows Federal Circuit (Schinzing)  Wheelchair washing machine!  License dispute, counterclaim for declaration of invalidity (inventorship problems, among others)  Transferred to Fed. Ct. (was this legit?)  8th Circuit, without explanation, adopts Fed. Cir. precedent on patent issues

11. Laura Kolb November 1, 2005 Solutions I: Congress Should Do Something!  Amend § 1338  Explicitly include counterclaims (5 variations)  Explicitly include defenses  Amend § 1295  Define “in part” to include compulsory counterclaims  Extend jurisdiction to include cases when “any substantive issue related to patents is decided” § 1338, amended 2005

12. Laura Kolb November 1, 2005 Solutions II: Regional Circuits Should Do Something!  Regional Circuits should follow Federal Circuit on substantive patent law if Federal Circuit decisions are consistent, but seriously consider minority views on the Federal Circuit when they exist  Anyone willing to argue full deference or full independence? Federal Circuit precedent Regional Circuit