Academic journal article Emory Law Journal

Rising Confusion about "Arising Under" Jurisdiction in Patent Cases

Academic journal article Emory Law Journal

Rising Confusion about "Arising Under" Jurisdiction in Patent Cases

Article excerpt

Introduction

The federal district courts have exclusive subject matter jurisdiction over cases "arising under" patent law.1 The U.S. Court of Appeals for the Federal Circuit has exclusive appellate jurisdiction over those same cases.2 At first blush, this regime seems simple: State courts may not hear patent cases, only federal courts can. And when there is an appeal in a patent case, it goes to the Federal Circuit, not one of the twelve regional circuits. Yet subject matter jurisdiction in patent cases is, surprisingly, one of the thorniest issues in all of civil procedure.

In a 2013 opinion holding that legal malpractice claims against patent attorneys do not fall within the federal courts' exclusive jurisdiction, Chief Justice Roberts noted that, in deciding the jurisdictional issue, "we do not paint on a blank canvas."3 "Unfortunately," he continued, "the canvas looks like one that Jackson Pollock got to first."4 In an earlier Supreme Court case on the scope of the Federal Circuit's appellate jurisdiction, the Court had to step in to stop what it called a "game ofjurisdictional ping-pong" in which the dispute had been transferred from the Federal Circuit to the Seventh Circuit and back again to the Federal Circuit,5 with each court "adamantly disavowing] jurisdiction" and each court "insist[ing] that the other's jurisdictional decision [was] 'clearly wrong.'"6

Despite frequent Supreme Court decisions on patent jurisdiction and recent congressional amendments to the relevant statutes,7 confusion persists. Indeed, as the title of this Article suggests,8 it seems to be getting worse. In February 2019, in a decision that attracted widespread attention from both patent lawyers and scholars, the Fifth Circuit refused to decide an appeal that had been transferred to it by the Federal Circuit, deriding the Federal Circuit's ruling declining jurisdiction as not just wrong but "implausible" and transferring the case back to the Federal Circuit.9 A month later, the Federal Circuit, despite numerous "flaws" it identified in the Fifth Circuit's transfer opinion, reluctantly accepted jurisdiction, seemingly ending this particular match of jurisdictional table tennis.10 But the harsh words the Fifth Circuit and Federal Circuit traded about each other's understanding of the relevant jurisdictional doctrine-as well as clear and persistent conflicts in the Federal Circuit's own jurisdictional precedent11-suggests that the Supreme Court, or perhaps the Federal Circuit en banc, will eventually have to step in to alleviate the rising confusion over arising under jurisdiction in patent cases.12

To be sure, in many patent disputes, subject matter jurisdiction is not seriously contested. A case in which a plaintiff asserts a claim of patent infringement, for example, plainly arises under patent law.13 The same goes for claims seeking declaratory judgments that a patent is invalid or not infringed.14 Infringement and declaratory judgment claims are actually created by federal patent law,15 so there is no question that cases containing those claims fall within the federal courts' and the Federal Circuit's exclusive jurisdiction.16 But confusion occurs because many cases that do not include claims for patent infringement nevertheless implicate patent law and therefore potentially "arise under" patent law for jurisdictional purposes.17 For example, plaintiffs often base antitrust claims on patent-related conduct.18 Though patent-related antitrust claims are usually (but not always) asserted under federal statutes such as the Sherman Act, claims created by state law can raise patent issues, too.19 Common examples include suits for breach of a patent licensing contract,20 tort claims based on false allegations of patent infringement,21 and malpractice claims against lawyers who litigated a prior infringement dispute or who prosecuted a patent.22

Under current law, it is often unclear whether these patent-related cases "arise under" patent law for the purpose of triggering the federal district courts' and the Federal Circuit's exclusive jurisdiction. …

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