Professor Shubha Ghosh, PhD, JD (Crandall Melvin Professor, Syracuse University College of Law)
Presented at the IP Center at the University of Akron in September, my forthcoming article addresses whether the jurisdiction of the Federal Circuit should be stripped. Here is the introduction:
The Federal Circuit is a specialized court with generalist aspirations. Created by Congress from the ashes of the Court of Claims and the Court of Customs and Patent Appeals, the Federal Circuit was given the appellate jurisdiction over subject matter of its predecessor courts. Pursuant to statute, the Federal Circuit hears appeals from Article I courts, such as the International Trade Commission, the Patent Trial and Appeals Board, the Trademark Trial and Appeals Board, the Merit Service Protection Board, and others. Most famously, appeals of final decisions from any district court in any civil action raising a patent claim or a compulsory patent counterclaim go directly to the Federal Circuit, with its precedent binding nationally. Although the Federal Circuit is an intermediate appellate court with final jurisdiction with the Supreme Court, given the volume of patent appeals and the limited grant of certiori by the high court, the Federal Circuit is effectively the “Supreme Court of Patent Law.”
Even with such detailed and limited domain, the Federal Circuit portrays itself as a generalist court. At a March, 2018, meeting of the Federal Judicial Conference, a number of Federal Court judges referred to themselves and their colleagues as generalist judges during a plenary panel of almost all the judges on the circuit court. There was no dissent from this characterization. One avenue through which the Federal Circuit has asserted its generalist inclinations through the statutory provision that grants the court subject matter jurisdiction over claims “arising under” any Act of Congress relating to patent or plant variety protection. This language has justified Federal Circuit jurisdiction over matters of copyright law, trademark law, and matters of state law that are related to patent law. This expansion of jurisdiction is troubling as it allows the Federal Circuit to create precedent that is outside of its scope of specialization, as intended by Congress. This Article makes the case for stripping the jurisdiction of the Federal Circuit either through amendment of the statute or through judicial interpretation of the existing statute that confers jurisdiction.
Jurisdiction stripping is a controversial topic, both politically and jurisprudentially. The controversies have arisen in politically charged areas, such as abortion rights, school integration, and access to the courts. To raise the issue in the context of patent law may seem disproportionate to the broader question of the separation of legislative and judicial powers. But jurisdiction stripping of the Federal Circuit has happened. The Supreme Court has limited the circuit’s jurisdiction over state law claims in its 2013 Gunn v. Minton decision and over patent counterclaims to antitrust claims in its 2005 Holmes v. Vornado decision. The latter decision was overturned by Congress through the America Invents Act of 2011. Federal Circuit jurisdiction is an active topic and not merely a technical one. The concern is by deciding cases outside of its subject matter expertise, the Federal Circuit is shaping areas of law in ways inconsistent with Congress’ intent and with the need for uniformity in federal law.
“Arising under” jurisdiction is justified in terms of the efficiency of adjudication. If a district court dispute involves patent claims and counterclaims as well as copyright, trademark, or state law contract claims relating to the patents, then there is a logic to having the Federal Circuit hear any appellate issues pertaining to the patent claims and the related non-patent claims. The problem is identifying what law the Federal Circuit should apply to the non-patent claims. Supreme Court precedent in the pertinent areas binds the court, but in areas where there is no such precedent, the court has to look at other areas of law. For trademark claims, the Federal Circuit might look to its own precedent reviewing PTAB decisions, one statutory area of the court’s subject matter jurisdiction. But for questions of trademark infringement, an area outside the scope of the PTAB’s purview over registration, the Federal Circuit needs to identify the pertinent body of law on which to base its decision. A similar question arises for copyright and state contract law decisions. With respect to trademark infringement and copyright questions, the Federal Circuit has ruled that it must look to the precedent of the circuit from which the appeal arose. But this sister circuit precedent is now filtered through the interpretative lens of Federal Circuit judges. With respect to contract law, the Federal Circuit seems to revert to general principles of law, creating what I have called a federal common law of contracts binding future cases arising from the intersection of patent and contract.
Unintentionally, a justification based in efficiency of adjudication leads to inefficient, nonuniform and questionable results.
Federal Circuit decisions on copyright and trademark, fields outside the court’s expertise, often add to the confusion in areas of law rather than providing needed clarity. For example, in its decision in Oracle v Google, the Federal Circuit addressed the issue of infringement of copyrighted software. Its decision for the copyright owner complicated the issues of copyright ownership, fair use, and the roles of the judge and jury in determining questions of fact and law in the adjudication of copyright questions. While the Federal Circuit has jurisdiction on appeals from denial of trademark registration, the judges arguably went outside their fields of expertise in addressing questions of trademark protection for colors, the meaning of geographic misdescriptive marks, and First Amendment protection for disparaging and scandalous speech. These ventures into areas that are outside the court’s original subject matter expertise do not further the goals of efficiency, whether gauged in terms of the costs of adjudication or uniformity. Instead, the ventures represent a specialized court trying to fly on generalist wings.
The full article will be published early next year.