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The Crossclaim Loophole Left Open by the America Invents Act, Inter-circuit Patent-law Splits

Congress established the United States Court of Appeals for the Federal Circuit over 30 years ago to bring uniformity to patent law. But the Federal Circuit is not truly a national patent court.

The Federal Circuit has never had jurisdiction over all appeals involving patents. The jurisdictional statute that Congress wrote for the Federal Circuit gave that court appellate jurisdiction over any civil action “arising under” the patent laws. OLYMPUS DIGITAL CAMERA

For many years, it was an open question whether the Federal Circuit had appellate jurisdiction over an action where there was no patent claim in the complaint but there was a patent claim in the answer or counterclaim. Read the rest of this entry


Protip: Don’t raise 8 issues on appeal

Here’s something you never want to see in response to one of your appeals:

Both parties have appealed and have raised many—too many—issues.

Accentra v. Staples is a multi-patent and trademark dispute between owners and licensees of several patents concerning staplers. Both Accetra and Staples prevailed in part in the district court, and both appealed. The parties raised at least the following issues:stapler

  1. Claim construction for the ’768 patent
  2. A means-plus-function non-infringement argument for the ’692 patent
  3. A literal non-infringement argument for the ’692 patent
  4. Indefiniteness finding against the ’709 patent
  5. Damages (The awarded amount was higher than any figure proffered by either party’s expert.)
  6. Trademark infringement
  7. Willfulness

These seven issues are merely the ones identified in the opinion, which suggests other issues were raised, too. “We have carefully considered the remaining issues on appeal…we affirm the district court’s rulings on each of those issues.”

Federal Circuit Holds ITC Cannot Limit Judicial Review of Issues

Yesterday, the Federal Circuit reversed an attempt by the ITC to hide certain issues from judicial review in General Electric v. ITC, No. 2010-1223.

After the ITC makes an initial determination, that determination becomes final (and therefore appealable) unless the ITC orders review of initial determination, in whole or part.  When the ITC reviews some or all issues following an initial determination, those issues become appealable after a final determination. But what happens when an issue is selected for review, but then is not actually reviewed?

Before yesterday, the ITC’s position was that issues selected but not reviewed may not be appealed to the Federal Circuit. The ITC reasoned that when the full Commission does not review an issue that it noticed for review, no final determination is made on that issue, and therefore no appeal of that issue can be taken. The Federal Circuit disagreed:

19 C.F.R. §210.42(h)(2) provides that issues decided by Initial Determination and not reviewed by the full Commission become final, and are appealable to the Federal Circuit. This right cannot be negated by taking no position on the issue. The result propounded by the Com-mission is anomalous: if the issue decided by initial determination is “noticed” and then reviewed by the Commission, the decision of that issue is routinely subject to appeal by the losing party; if the issue is not “noticed” by the Commission, the decision is again routinely subject to appeal by the losing party; but if the issue is “noticed” by the Commission and then not reviewed, the decision is not subject to appeal by the losing party.

The rule going forward is clear: If an issue decided in an initial determination is not actually reviewed, that issues may then be appealed (even if it was notice for review). If an issue is reviewed in a final determination, an appeal is properly taken following the final determination.

The question remains whether the application of this rule will be clear. It may be the case that where an issue is noticed for review—but not actually reviewed—some ambiguity may exist as to what the proper time is for taking an appeal.

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