To embed, copy and paste the code into your website or blog:
<iframe frameborder="1" height="620" scrolling="auto" src="//www.jdsupra.com/post/contentViewerEmbed.aspx?fid=d34baf00-d016-4970-ad4c-939f549df7fb" style="border: 2px solid #ccc; overflow-x:hidden !important; overflow:hidden;" width="100%"></iframe>
We’ve previously  written  about Chandler v. Phoenix Services, L.L.C., an interesting case on the Federal Circuit’s exclusive appellate jurisdiction in patent cases. Earlier this week, the Fifth Circuit issued a decision marking the latest entry in that saga. A quick recap of the relevant background: a Walker Process claim is an antitrust claim alleging enforcement of a fraudulently obtained patent. In an earlier case, Xitronix Corporation v. KLA-Tencor Corporation, the Federal Circuit and the Fifth Circuit disagreed about which court had appellate jurisdiction over Walker Process claims. The Federal Circuit held that the Walker Process claim there arose under antitrust law rather than patent law, and thus transferred the appeal to the Fifth Circuit. But the Fifth Circuit sent the appeal back to the Federal Circuit, reasoning that the Federal Circuit had exclusive jurisdiction because the antitrust claim depended in part on a patent-law issue—whether the relevant patent was enforceable. After receiving the case back from the Fifth Circuit, the Federal Circuit reiterated its disagreement with the Fifth Circuit’s reasoning. Nevertheless, the Federal Circuit accepted jurisdiction over the appeal, deeming the Fifth Circuit’s conclusion “not implausible.”
A similar jurisdictional question arose in Chandler. That case, like Xitronix, involved a Walker Process claim in a district court within the Fifth Circuit. The Chandler plaintiffs appealed to the Federal Circuit. But the Federal Circuit stuck to the position laid out in its first (and precedential) Xitronix decision, concluded that it lacked appellate jurisdiction, and transferred the appeal to the Fifth Circuit. The Fifth Circuit has now issued its  decision  in Chandler, accepting the transfer from the Federal Circuit. The Fifth Circuit stressed that “[t]he Walker Process claim here differs from the one in Xitronix in an important respect”: the patent at issue already had been declared unenforceable in another proceeding, leaving no live patent-law issues to be decided. The Fifth Circuit thus deemed the Federal Circuit’s jurisdictional conclusion “plausible.” But the Fifth Circuit continued: “That does not mean, we hasten to add, that it is correct.” The Fifth Circuit read its Xitronix decision to mean that all standalone Walker Process claims belong in the Federal Circuit, even those that do not turn on any unresolved patent issues. Nonetheless, the Fifth Circuit accepted the case to avoid “a perpetual game of jurisdictional ping-pong.” The Fifth Circuit went on to address the merits of the antitrust claim, affirming the judgment for the defendants. The Chandler plaintiffs could seek further review of the jurisdictional issue in the Supreme Court. And ordinarily, an express circuit split like the Federal and Fifth Circuits’ disagreement here might make a good candidate for Supreme Court intervention. But the Supreme Court denied certiorari in Xitronix, which raised much the same issue as Chandler. That said, the Court’s composition has changed since it denied review in Xitronix in October 2019—Justices Barrett and Jackson have replaced Justices Ginsburg and Breyer. If the Chandler plaintiffs do file a cert petition, it will be interesting to see whether the two new Justices lead to a different outcome.

Jurisdictional Ping-Pong Averted

To embed, copy and paste the code into your website or blog:
<iframe frameborder="1" height="620" scrolling="auto" src="//www.jdsupra.com/post/contentViewerEmbed.aspx?fid=06a50d6a-f050-4078-ab03-7477e2a60ab4" style="border: 2px solid #ccc; overflow-x:hidden !important; overflow:hidden;" width="100%"></iframe>
What happens when two courts of appeal each think the other has exclusive jurisdiction over an appeal? Confusion and inter-circuit criticism. The latest chapter in such a dispute between the Federal and Fifth Circuits on the scope of the Federal Circuit’s exclusive jurisdiction in patent cases is unfolding now. Chandler v. Phoenix Services involves a so-called Walker Process claim. Walker Process monopolization claims are antitrust—not patent—claims based on the enforcement of patents procured by fraud. In Chandler, the defendants’ patent had been found unenforceable due to inequitable conduct in an earlier case. While that case was making its way to the Federal Circuit, the Chandler defendants allegedly took several steps to enforce the patent against competitors (including the Chandler plaintiffs), such as sending cease and desist letters, advertising the patent on their website, and asserting the patent in litigation. The Chandler plaintiffs then brought a Walker Process claim, alleging that the defendants were trying to enforce a patent they knew to be unenforceable. The district court granted summary judgment to defendants, finding that the plaintiffs lacked standing and that the statute of limitations had expired. The Chandler plaintiffs appealed to the Federal Circuit. But in a precedential order issued last month, the Federal Circuit declined jurisdiction and transferred the case to the Fifth Circuit—the regional circuit for this case arising from district court in Texas. In the transfer order, the Federal Circuit recounted blow-by-blow its previous dispute with the Fifth Circuit over which one had appellate jurisdiction over a similar claim. By way of background, 28 U.S.C. § 1295(a)(1) gives the Federal Circuit exclusive jurisdiction over appeals “arising under[] any Act of Congress relating to patents.” In Xitronix Corporation v. KLA-Tenco Corporation, the Federal Circuit issued a precedential order holding that it lacked appellate jurisdiction over a Walker Process case on the ground that it arose under antitrust law, not patent law. 889 F.3d 1075, 1078 (Fed, Cir. 2018) (“Xitronix I”). As the court explained, “patent claims will not be invalidated or reviewed based on the results of this case.” The Federal Circuit thus transferred the appeal to the Fifth Circuit. The Fifth Circuit, however, disagreed and shipped the Xitronix appeal back to the Federal Circuit. In doing so, it took a more expansive view of the Federal Circuit’s jurisdiction than the Federal Circuit itself had. The Fifth Circuit concluded that the case belonged in the Federal Circuit because it “touched on” patent law in that the plaintiff’s antitrust claim turned in part on whether the patent at issue was enforceable. Xitronix Corporation v. KLA-Tenco Corporation, 916 F.3d, 429, 441 (5th Cir. 2019) (“Xitronix II”). After receiving the bounce-back from the Fifth Circuit, the Federal Circuit in Xitronix accepted jurisdiction in a non-precedential decision. In doing so, however, it characterized the Fifth Circuit’s reasoning as “incorrect,” “untenable,” and based on a “misread[ing]” of Federal Circuit precedent. Xitronix Corp. v. KLA-Tencor Corp., 757 Fed. Appx. 1008, 1009 (Fed. Cir. 2019). Fast-forward to June 2021 and the Chandler appeal. The Federal Circuit again found itself with an appeal in a Walker Process case arising from a district court from within the Fifth Circuit. So what did it do? It adhered to the position articulated in the first (and precedential) Xitronix order, concluded it lacked appellate jurisdiction, and transferred the appeal to the Fifth Circuit. In doing so, it recounted its dispute with the Fifth Circuit in Xitronix. The Federal Circuit explained that while it had ultimately acquiesced to jurisdiction in Xitronix it had not backed down from its view that the appeal had actually belonged in the Fifth Circuit. The Federal Circuit defended its reasoning in Xitronix I, noting that in Gunn v. Minton 568 U.S. 251 (2013), the Supreme Court held that a state court had jurisdiction over a malpractice suit because it did not “arise under” federal patent law, despite requiring a patent law issue to be resolved. Drawing on Gunn, the Chandler court re-stated its position that “the risk of another circuit making an erroneous or inconsistent patent law decision within a Walker Process claim is not enough to trigger [Federal Circuit] jurisdiction over federal patent law cases.”
What will happen next in Chandler? It seems likely that the jurisdictional ping-pong between Washington and New Orleans will not resume here and that the Fifth Circuit will take the case. As the Federal Circuit’s transfer order notes, the Fifth Circuit should have jurisdiction over Chandler even under the Fifth Circuit’s own reasoning in Xitronix II. That is so because the patent-at-issue had previously been ruled unenforceable, leaving no live patent law issues to be decided. If the Federal Circuit’s prediction is correct, the underlying disagreement between the circuits will likely remain unresolved. And future appeals involving Walker Process and other patent-adjacent claims could continue to bounce between the two courts—unless and until one of them recedes from its view or the Supreme Court steps in.

Return to Sender: When Courts of Appeals Disagree on Which One Has Jurisdiction

To embed, copy and paste the code into your website or blog:
<iframe frameborder="1" height="620" scrolling="auto" src="//www.jdsupra.com/post/contentViewerEmbed.aspx?fid=ca902268-6cda-4cc5-8f3d-45b4d76738e7" style="border: 2px solid #ccc; overflow-x:hidden !important; overflow:hidden;" width="100%"></iframe>
On June 10, 2021, the Federal Circuit issued a precedential order in Chandler v. Phx. Servs. LLC, No. 2020-1848 (Fed. Cir. Jun. 10, 2021) that clarified the scope of its jurisdiction over Walker Process1 claims of monopolization brought under § 2 of the Sherman Act. Walker Process holds that a party that knowingly asserts a fraudulently procured patent in an effort to monopolize a market may be liable for an antitrust violation. To prevail in a Walker Process action, a claimant must prove (i) that a patentee secured its patent through knowing and willful fraud upon the PTO, then maintained and enforced the patent despite knowledge of the fraud, and (ii) all other elements required to prove a monopolization or attempted monopolization claim under the Sherman Act.2 Because Walker Process claims typically arise as counterclaims in patent litigation, the Federal Circuit often hears appeals on Walker Process claims as a matter of course.3 However, a Walker Process claim may be brought as a “standalone claim” (i.e. outside of patent litigation), and the Federal Circuit’s decision in Chandler sought to clarify when the court has jurisdiction over such claims. Heat On-The-Fly’s U.S. Patent No. 8,171,993 (the ’993 patent) is directed to methods of using a fracking technology.4 During prosecution, the sole inventor and Heat On-The-Fly owner, Mark Hefley, failed to disclose 61 prior public uses of the claimed invention that occurred more than a year before the patent application was filed.5 Plaintiffs Ronald Chandler, Chandler Manufacturing, LLC, Newco Enterprises, LLC, and Supertherm Heating Services, LLC (Chandler) alleged that Heat On-The-Fly asserted the ’993 patent, and further that this enforcement “continued in various forms” following Defendants Phoenix Services, LLC and Mark Fisher’s (Phoenix) acquisition of Heat On-The-Fly and the ’993 patent.6 In an unrelated suit in 2018,7 the Federal Circuit declared the ’993 patent unenforceable on account of the knowing failure to disclose prior uses during prosecution.8 Thereafter, in the present case, Chandler brought a Walker Process antitrust claim against Phoenix over continued assertion of the ’993 patent. The question the Federal Circuit faced was whether it has jurisdiction over an appeal to a standalone Walker Process antitrust claim that involves ancillary patent law issues. The court concluded that it did not. The statutory source of the Federal Circuit’s jurisdiction is 28 U.S.C. § 1295(a)(1), which states that the court’s jurisdiction extends to appeals from the district courts “in any civil action arising under, or in any civil action in which a party has asserted a compulsory counterclaim arising under, any Act of Congress relating to patents.” However, not all appeals “relating to patents” fall under the Federal Circuit’s jurisdiction, only those cases
in which a well-pleaded complaint establishes either that federal patent law creates the cause of action or that the plaintiff’s right to relief necessarily depends on resolution of a substantial question of federal patent law, in that patent law is a necessary element of one of the well-pleaded claims.9
The Federal Circuit previously addressed this limitation in Xitronix Corp v. KLA-Tencor Corp. (Xitronix I).10
In Xitronix I, the Federal Circuit held that a Walker Process claim does not present a substantial issue of patent law, and that it lacks jurisdiction over a standalone Walker Process claim based upon the assertion of a “live” patent. Even the risk that a regional circuit might err in deciding a patent “case within a case” would not justify the Federal Circuit’s jurisdiction over all appeals from federal patent cases.11 The Federal Circuit reasoned that:
[b]ecause Federal Circuit law applies to substantive questions involving our exclusive jurisdiction, the fact that at least some Walker Process claims may be appealed to regional circuits will not undermine our uniform body of patent law… even if the result of this case is preclusive in some circumstances, the result is limited to the parties and the patent involved in th[e] matter.”12
However, upon transfer the Fifth Circuit disagreed and returned the case to the Federal Circuit.13 At the heart of the disagreement were two issues. The first issue was whether or not the Supreme Court’s decision in Gunn v. Minton14 remained relevant to an analysis of the Federal Circuit’s jurisdiction over standalone Walker Process claims.15 Gunn involved the interpretation of 28 U.S.C. § 1338, which confers jurisdiction to the district courts over cases that involve statutes relating to patents. In Gunn, the Supreme Court held that a malpractice case involving a patent attorney did not “arise under” the federal patent laws pursuant to § 133816 — even though the case involved resolution of a patent law issue.17 The Supreme Court was satisfied that a state court’s resolution of a patent “case-within-a-case” would have no effect on prior federal patent litigation or undermine federal patent law because “federal courts are of course not bound by state court case-within-a-case patent rulings.”18 The Fifth Circuit considered Gunn irrelevant to interpretation of “arising under” in 28 U.S.C. § 1295(a)(1) because while § 1295(a)(1) expressly referenced § 1338 before, the America Invents Act (AIA) replaced that reference with the phrase “any civil action arising under… any Act of Congress relating to patents.”19 The Federal Circuit disagreed and found that Gunn continued to remain relevant to an analysis of “arising under” in § 1295(a)(1), noting that Section 19 of the AIA amended § 1295(a)(1) to read in parallel to § 1338, though it also expanded the Federal Circuit’s jurisdiction to cover compulsory counterclaims.20 This meant that Congress intended the statutes to remain linked.21
The second issue was whether or not Federal Circuit precedent dictated that the court had jurisdiction over standalone Walker Process claims. The Fifth Circuit cited two cases for the proposition that it did.22 First, in Nobelpharma AB v. Implant Innovations, Inc.,23 the Federal Circuit held that its own law – and not regional circuit law – applied to Walker Process claims; the Fifth Circuit concluded on the basis of Nobelpharma AB that the Federal Circuit has jurisdiction over standalone Walker Process claims. The Federal Circuit disagreed, noting a distinction between “the scope of our jurisdiction and whether Federal Circuit law applies”: while Walker Process claims typically arise in patent litigations, appeals to which invoke Federal Circuit jurisdiction, “that does not mean every Walker Process claim gives rise to Federal Circuit jurisdiction.”24 The Fifth Circuit also pointed to a footnote in In re Ciprofloxacin Hydrochloride Antitrust Litig25 in which the Federal Circuit stated that “the determination of fraud before the PTO necessarily involves a substantial question of patent law.”26 However, because the case was transferred to the Federal Circuit, it reviewed the question of jurisdiction under the plausibility standard of Christianson27 and never conducted a de novo analysis.28 Thus, the Federal Circuit rejected the inference that it has jurisdiction over all Walker Process cases, though it accepted the transfer of Xitronix from the Fifth Circuit, stating that the rationale behind the Transfer Order was “not implausible.”29 Specifically, the Supreme Court’s decision in Gunn “could be read to imply that whether the patent question at issue is substantial depends on whether the patent is ‘live’ such that the resolution of any question of patent law is not ‘merely hypothetical.’”30 Because the patent at issue in Xitronix remained a live patent and litigation could render the patent unenforceable, the Federal Circuit accepted jurisdiction. Turning back to the case at hand, the Federal Circuit found Xitronix line of cases to be instructive. The Xitronix cases were distinguishable from the present case for a simple reason: here, the patent at issue had already been rendered unenforceable.31 Discussion of the ’993 patent would be “merely hypothetical,” and any decision would not change the validity of the ’933 patent or the result of the prior federal patent litigation.32 However, the court precautionarily noted that “we do not hold that our jurisdiction turns on whether a patent can still be asserted.”33
Accordingly, the Federal Circuit concluded that it lacked subject matter jurisdiction over the appeal and transferred the case to the Fifth Circuit to address an issue of first impression in that circuit: whether a parent company may be liable for attempted monopolization by its subsidiary.34
In Chandler, the Federal Circuit has clarified under what circumstances Walker Process claims will fall under its own appellate jurisdiction versus that of the regional circuit. Underlying this opinion is the concept that while Walker Process cases may or may not present live patent disputes, they always, by their nature, include substantive antitrust claims that are distinguishable from any underlying patent claims. 1In Walker Process Equip., Inc. v. Food Mach. & Chem. Corp., the Supreme Court held that enforcement of a patent procured by fraud could amount to a violation of § 2 of the Sherman Act, provided that the other elements necessary to prove a claim under § 2 of the Sherman Act, such as monopoly power, antitrust injury, and injury-in-fact were present; in such cases, the injured party would have a claim to treble damages. 382 U.S. 172 (1965). 2TransWeb, LLC v. 3M Innovative Props. Co., 812 F.3d 1295, 1306 (Fed. Cir. 2016). 3Xitronix Corp. v. KLA-Tencor Corp., 882 F.3d 1075, 1079 (Fed. Cir. 2018). 4See Chandler v. Phx. Servs. LLC, No. 2020-1848, slip op. at 3 (Fed. Cir. Jun. 10, 2021). 5Id.

Federal Circuit Clarifies the Scope of Its Jurisdiction Over Walker Process Antitrust Claims in Chandler. v. Phoenix Services LL...

To embed, copy and paste the code into your website or blog:
<iframe frameborder="1" height="620" scrolling="auto" src="//www.jdsupra.com/post/contentViewerEmbed.aspx?fid=a5d2c0ff-9852-4d16-a531-f90ca8efc8d3" style="border: 2px solid #ccc; overflow-x:hidden !important; overflow:hidden;" width="100%"></iframe>
The US Court of Appeals for the Federal Circuit ordered the transfer of a case asserting standalone Walker Process antitrust claims involving an unenforceable patent to the regional circuit, in this case the US Court of Appeals for the Fifth Circuit. 20-1848 (Fed Cir. The case originated in the US District Court for the Northern District of Texas, over which the Fifth Circuit has appellate jurisdiction. The decision to transfer was based on a subject matter jurisdiction analysis for Walker Process claims. The Federal Circuit reiterated that its precedent does not mandate exclusive Federal Circuit jurisdiction over all Walker Process cases. In 2006, Phoenix Services and Mark Fisher (collectively, Phoenix) acquired a company called Heat On-The-Fly and its patent to protect a purported proprietary fracking process. Heat-On-The-Fly, and later Phoenix, sought to enforce the patent against numerous parties. During the patent application process, however, Heat On-The-Fly had failed to disclose numerous public uses of the fracking process prior to the application filing. In 2018, in an unrelated case, Energy Heating, LLC v. Heat On-The-Fly, the Federal Circuit, held that “failure to disclose prior uses of the fracking process rendered the . . . patent unenforceable due to inequitable conduct.” The plaintiffs in the case at hand, Ronald Chandler, Chandler MFG., Newco Enterprises and Supertherm Heating Services (collectively, Chandler), alleged that Phoenix’s continued enforcement of the patent violated Walker Process pursuant to § 2 of the Sherman Act. Walker Process monopolization claims originate from a 1965 Supreme Court decision that recognized an antitrust cause of action under the Sherman and Clayton Acts when a party fraudulently obtains a patent for the purpose of attempted monopolization. Walker Process Equipment, Inc. v. Food Machinery & Chemical Corp. To succeed on a Walker Process claim, a plaintiff must satisfy two elements:
The plaintiff must show that the defendant obtained the patent through knowing and willful fraud on the US Patent & Trademark Office and enforced that patent with knowledge of its fraudulent procurement. The plaintiff must be able to satisfy all other elements for a Sherman Act monopolization claim. Pursuant to 28 U.S.C. § 1295(a)(1), the Federal Circuit retains jurisdiction over any civil case arising under any act of Congress relating to patents. In this instance, the Federal Circuit stated that Walker Process antitrust claims may relate to patents “in the colloquial use of the term,” but under 1988 Supreme Court precedent, Christianson v. Colt Indus., the Federal Circuit’s jurisdiction only extends to cases where the cause of action is created under federal patent law, or where the plaintiff’s right to relief “necessarily depends on resolution of a substantial question of federal patent law.”
Here, the Federal Circuit relied on its own 2018 precedent where it analyzed subject matter jurisdiction for Walker Process claims. Xitronix Corp v. KLA-Tencor Corp. (Xitronix I). Xitronix I involved alleged fraud by the defendants to obtain a patent. The Court acknowledged that patent law was applicable to adjudicating the case, but ultimately held that Walker Process claims do not present a substantial issue of patent law under Supreme Court precedent. Therefore, the Federal Circuit transferred the Xitronix I case to the Fifth Circuit. In 2019, the Fifth Circuit, upon finding the Federal Circuit’s analysis “implausible” and that Federal Circuit precedent provided for jurisdiction over Walker Process claims, returned the case to the Federal Circuit. Xitronix II . The Federal Circuit agreed to hear the case because, in its view, the Fifth Circuit’s analysis was not “implausible,” and because a prior case implicitly found that whether a patent question is “substantial” turns on whether the patent in issue is “live” such that the resolution of the non-patent issue is not “merely hypothetical.” Xitronix III (citing the Supreme Court 2013 decision in Gunn v. Minton). The Federal Circuit distinguished the present case from Xitronix because here the patent was deemed unenforceable in 2018—meaning there was no longer a “live” patent at issue. Therefore, the Federal Circuit explained the jurisdiction analysis in Xitronix III was inapplicable. Since the patent was previously held unenforceable, another court’s analysis of the Walker Process antitrust claims did not risk altering the validity of a “live” patent or declaring that a proceeding before the US Patent & Trademark office was tainted. The Court thus concluded that the Phoenix case invoked less of a justification for jurisdiction than Xitronix, and that the Court’s subject matter jurisdiction analysis in Xitronix I was controlling and necessitated a transfer to the Fifth Circuit. Practice Note: The Federal Circuit decisions in Phoenix and Xitronix make clear that the Federal Circuit will not assert subject matter jurisdiction over a standalone Walker Process antitrust claim without, at the very least, a preliminary determination that the relevant patent is “live.”

Federal Circuit Lacks Appellate Jurisdiction over Standalone Walker Process Claims

To embed, copy and paste the code into your website or blog:
<iframe frameborder="1" height="620" scrolling="auto" src="//www.jdsupra.com/post/contentViewerEmbed.aspx?fid=3501b708-7ca3-4bcf-beca-803f4ccde0ce" style="border: 2px solid #ccc; overflow-x:hidden !important; overflow:hidden;" width="100%"></iframe>
Ronald Chandler v. Phoenix Services LLC, Appeal No. 2020-1848 (Fed. Cir. June 10, 2021)
In this week’s Case of the Week, the Federal Circuit addressed the ongoing question of its subject matter jurisdiction over cases involving patents, but that do not concern allegations of infringement or invalidity. In this week’s case, the Court determined that it lacked subject matter jurisdiction over an appeal from a Walker Process antitrust claim and transferred the appeal to the Fifth Circuit Court of Appeals. The Court narrowly distinguished a prior case involving a Walker Process claim where it held it did have subject matter jurisdiction. In 2006, a company called Heat On-The-Fly began using a new fracking technology. Shortly thereafter, Heat On-The-Fly’s owner, Mark Hefley, filed a patent application regarding the fracking process. However, Hefley knowingly “failed to disclose 61 public uses of the process that occurred over a year before the application was filed.” The application led to the ’993 patent, which Heat On-The-Fly asserted against numerous parties. In 2014, defendants Phoenix Services, LLC and Mark Fisher (“Phoenix”) acquired Heat On-The-Fly and the ’993 patent. In 2018, the Court, in an unrelated suit, “affirmed a holding that the knowing failure to disclose prior uses of the fracking process rendered the ’993 patent unenforceable due to inequitable conduct.” Phoenix continued to enforce the ’993 patent. In the present suit, plaintiffs Ronald Chandler, Chandler Manufacturing, LLC, Newco Enterprises, LLC, and Supertherm Heating Services, LLC (“Chandler”) allege that “Phoenix’s assertion of the ’993 patent against Chandler constitutes a Walker Process anti-trust violation.”
Presented with an appeal from Chandler’s Walker Process claim, the Court determined that it lacks subject matter jurisdiction because the claim does not “arise under” the patent laws of the United States. First, in reaching this conclusion, the Court relied on its own precedent, Xitronix I. In Xitronix I, the “plaintiff asserted a standalone Walker Process monopolization claim based on enforcement of a live patent, alleging fraud on the PTO in procuring that patent.” The Federal Circuit held that it lacked subject matter jurisdiction and transferred to the Fifth Circuit. In doing so, the Court relied on the Supreme Court’s decision in Gunn v. Minton where it interpreted the words “arising under‎.” Pursuant to ‎28 U.S.C. § 1295(a)(1), the Federal Circuit has jurisdiction over an appeal of a final decision of a district court “in any civil action arising under … any Act of Congress relating to patents.” In Xitronix I, the Federal Circuit concluded that “the risk of another circuit making an erroneous or inconsistent patent law decision within a Walker Process claim is not enough to trigger [Federal Circuit] jurisdiction over federal patent law cases” because resolution of a “patent case within a case” has no effect on the uniform body of patent law in that the results would be “limited to the parties and the patent involved in [the matter].” Here, the Court adopted this reasoning and found that Xitronix I mandated the transfer of Chandler’s Walker Process claims to the Fifth Circuit. The Court emphasized that the “case to invoke [Federal Circuit] jurisdiction [was] even weaker [ ] than in Xitronix I” because the ’993 patent was already held unenforceable and thus, “the appellate court hearing this case [would] have little or no need to delve into patent law issues.”
Next, the Court addressed issues raised by the Fifth Circuit’s decision in Xitronix II. In Xitronix II, the Fifth Circuit found the Federal Circuit’s transfer decision in Xitronix I to be implausible and returned the case to the Federal Circuit. The Federal Circuit concluded that its reliance on Gunn in Xitronix I was correct. The Court explained, “[I]t is clear that Congress intended the link between the statutes to continue rather than end. Thus, we respectfully disagree with the Fifth Circuit’s conclusion that the Supreme Court’s interpretation of § 1331 and § 1338 in Gunn is irrelevant to our interpretation of § 1295.” The Federal Circuit also addressed the Fifth Circuit’s conclusion that Federal Circuit precedent dictates Federal Circuit jurisdiction over standalone Walker Process claims. The Court clarified that while “Walker Process claims usually arise in the context of patent litigation … that does not mean every Walker Process claim gives rise to Federal Circuit jurisdiction.” The Court also distinguished its acceptance of the return transfer from the Fifth Circuit in Xitronix II. In Xitronix II, the patent at issue was “valid and enforceable, so the litigation had the potential to render that patent effectively unenforceable and to declare the PTO proceeding tainted by illegality.” Thus, the Court accepted the return as there was a “plausible” basis for jurisdiction. In the instant case, the patent had already been held unenforceable in a separate lawsuit, thus, “[a]ny discussion of the ’993 patent would be merely hypothetical, and would not change the result of the prior federal patent litigation.”
Accordingly, the Court found that it lacked subject matter jurisdiction and entered an order to transfer the appeal to the Fifth Circuit. A copy of the opinion can be found here . By Annie White

Latest Federal Court Cases - June 2021 #3

Eastern Air Lines Group

Xitronix is a world pioneer in providing semiconductor manufacturing technologies and solutions for process control of both USJ dopant activation and transistor strain.

Name	Will Chism
Work History	Eastern Air Lines Group
Title	Founder
Status	Current

Wells Fargo Success Story

Professional Services

Platform Overview

Xitronix

Executives

Xitronix Management Team

1 Team Member

This profile has not been claimed.

Discover the right solution for your team