Guest post by Paul R. Gugliuzza & Joshua L. Sohn
One of the oddest things about the Federal Circuit is that, in the court’s view, it’s powerless to decide many issues of federal law that arise in the appeals presented to it.
Sure, on matters of patent law, what the Federal Circuit says binds district courts, the Patent Office, and future panels of the Federal Circuit itself. Ditto for nonpatent matters the Federal Circuit considers “unique” to patent disputes.
But, on pretty much every other issue in a Federal Circuit patent appeal—whether it be transfer of venue, the permissible scope of discovery, co-pending antitrust or copyright claims, or anything else—the Federal Circuit asserts no “law-saying” power. Instead, the Federal Circuit—and district courts in cases that will be appealed to the Federal Circuit—apply the precedent of the regional circuit from which the case arose.
Recent Federal Circuit venue disputes spotlight the need for a better approach to questions of nonpatent law in patent cases.
As readers of this blog surely know, the Federal Circuit decides venue questions all the time, usually through petitions for writs of mandamus by defendants seeking to escape the Eastern or Western Districts of Texas. As a nonpatent issue, however, a court deciding a transfer-of-venue fight in a patent case must apply regional circuit law.
Yet, at the regional circuits, transfer disputes are vanishingly rare: the Federal Circuit in a single year decides as many transfer cases as the regional circuits decide in a decade. Moreover, the regional circuit cases that do exist usually involve fact patterns wildly dissimilar from patent litigation, making that precedent unhelpful in the patent context.
The paucity of relevant binding precedent has led both district judges and Federal Circuit judges to essentially guess about what “what the law is.” Judge Albright, for instance, has complained about having to choose between what he characterized as “traditional Fifth Circuit transfer law” or “the Federal Circuit’s”—erroneous, in his view—“interpretations of Fifth Circuit transfer law.”
And, in one of the Federal Circuit’s most high-profile venue mandamus grants, In re Apple, Judge Moore castigated the majority on the ground that “[n]either [the Federal Circuit] nor the Fifth Circuit has held that an accused infringer’s general presence in a district is irrelevant” to the transfer analysis. Well, of course the Fifth Circuit has never held that! With the Federal Circuit’s exclusive jurisdiction over patent cases, how could it?
Transfer isn’t the only area where we see the Federal Circuit’s choice-of-law rule leaving judges and litigants in the dark. In a forthcoming article, we provide examples from areas as varied as copyright, antitrust, and attorney-client privilege.
And we propose a simple solution: much like federal courts certify unsettled questions of state law to state supreme courts, the Federal Circuit should certify unsettled questions of nonpatent law to the regional circuits.
At this point, you hopefully have lots of questions: Wouldn’t we need Congress to pass a statute to make this happen? What about Article III’s case-or-controversy requirement? Wouldn’t certifying questions just add more cost and delay? And wouldn’t it be easier to simply change the choice-of-law rule?
To see how we respond, download the article!
Paul R. Gugliuzza is Professor of Law at Temple University Beasley School of Law.
Joshua L. Sohn is a Trial Attorney at the U.S. Department of Justice and former law clerk to Judge Jerome Farris, U.S. Court of Appeals for the Ninth Circuit. J.D., Harvard Law School; A.B., Stanford University.
The views expressed in this piece are those of the authors and should not be taken to represent those of the U.S. Department of Justice.