Gaps, Conflicts and Ambiguities in the Federal Courts’ Post-AIA Patent Jurisdiction

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In the year and a half since Congress passed the Leahy-Smith America Invents Act (AIA), much has been said and written about the AIA’s substantive impacts on patent law and on practice before the Patent and Trademark Office. Little, however, has been said about the AIA’s impact on federal courts’ jurisdiction over patent cases. As we wait for the first post-AIA jurisdictional disputes to percolate up to the Federal Circuit, attention needs to be paid to several gaps, conflicts and ambiguities that may prove troublesome. This article identifies several of these issues and provides a brief overview of the federal district courts’ patent jurisdiction, the Federal Circuit’s patent jurisdiction, and the relationship between the Federal Circuit and the district courts it reviews.

Pre-AIA Patent Jurisdiction -

Federal courts’ jurisdiction over patent cases stems from 28 U.S.C. §§ 1338(a) and 1295. Before the AIA was signed into law, Section 1338 provided the federal district courts with jurisdiction over “any civil action arising under any Act of Congress relating to patents . . . .” Section 1295, in turn, provided the Federal Circuit with jurisdiction over “an appeal from a final decision of a district court of the United States . . . if the jurisdiction of that court was based, in whole or in part, on section 1338 . . . .” The language of these provisions was reasonably simple, but how that language substantively impacted the courts’ jurisdictions was less than clear, resulting in dozens of precedential decisions at the Federal Circuit over a span of 30+ years and three decisions from the Supreme Court: Christianson v. Colt Industries Operating Corp., Holmes Group, Inc. v. Vornado Air Circulation Systems, and, most recently, Gunn v. Minton.

Originally published in Intellectual Property & Technology Law Journal in July 2013.

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