A federal appeals court recently dismissed a witness’s appeal of an order entered in her home district and held that the U.S. Court of Appeals for the Federal Circuit has “exclusive jurisdiction” over discovery-related disputes in patent cases. The decision serves as a reminder of the Federal Circuit’s broad appellate jurisdiction over patent-related cases and any discovery fights arising from them, ABA Litigation Section leaders state.
June 12, 2023 Top Story
Federal Circuit Holds Sway in Patent Appeals
Regional circuit court lacks appellate jurisdiction over discovery order.
By David E. Dobin
In Fraunhofer-Gesellschaft Zur Forderung Der Angewand v. Sirius XM Radio Inc., the plaintiff filed a patent infringement lawsuit against the defendant in the U.S. District Court for the District of Delaware. The plaintiff then subpoenaed the defendant’s former employee, who resided in the Washington, D.C., area. The witness filed a motion to quash the subpoena and the plaintiff responded with a cross-motion to compel the witness’s testimony. Pursuant to Federal Rule of Civil Procedure 45, the parties’ motions were filed in the U.S. District Court for the District of Columbia.
Seeking Protection from the “Home Court”
A three-judge panel of the D.C. Circuit dismissed the appeal. First, it held that the witness’s compliance with the court order compelling her deposition rendered the appeal moot. Second, citing 28 U.S.C. § 1295(a)(1), the court held that the Federal Circuit has “exclusive jurisdiction” over discovery proceedings ancillary to a patent suit. On this point, while the court recognized that the district court’s “first-layer authority derives from Federal Rules of Civil Procedure 37(a)(1) and 45, which assign to it the responsibility of issuing and enforcing subpoenas in its district,” it adopted the reasoning applied by the U.S. Court of Appeals for the Fourth Circuit and the U.S. Court of Appeals for the Second Circuit in holding that those rules “do not confer subject matter jurisdiction upon the courts.”
Instead, the court concluded that because the underlying action in the District of Delaware arose under an “Act of Congress relating to patents” and the dispute in the District of Columbia was “a discovery proceeding ancillary to a patent suit,” 28 U.S.C. § 1295(a)(1) required the appeal to be brought in the Federal Circuit. Ultimately, however, the court held that the appeal could not be transferred to the Federal Circuit because it was not “final and appealable.” The lower court had not yet entered a judgment of sanctions and the issue therefore could not have been brought in the Federal Circuit at the time it was appealed to the D.C. Circuit.
Broad Scope of the Federal Circuit’s Appellate Jurisdiction
“The decision appears contrary to the policy rationale behind Rule 45, which encourages discovery rulings in witnesses’ home districts,” notes Brian Esler, Seattle, WA, vice-chair of the Litigation Section’s Business Torts & Unfair Competition Committee. While acknowledging that a regional circuit court might be better positioned to deal with discovery disputes unrelated to patents, Chad S.C. Stover, Wilmington, DE, cochair of the Section’s Intellectual Property Litigation Committee, explains that disputes over subpoenas in patent-related cases involve patent-related questions “most of the time and there are very few cases where a subpoena has nothing to do with a patent.”
Moreover, the Federal Circuit exists so there is a “reasonably consistent body of patent law rather than circuit splits,” explains Matt C. Acosta, Dallas, TX, cochair of the Section’s Intellectual Property Litigation Committee. Acosta and Stover agree that the D.C. Circuit’s decision furthers this purpose, a “broad brush” is necessary to achieve uniformity in the area of patent law. This case serves as a reminder that lawyers working on patent-related cases need to know what the Federal Circuit is saying about the discovery disputes they are involved in.
Hashtags: #PatentLitigation, #JudicialSanctions, #FederalCircuit, #Depositions
Resource
- Selena Kim, Jonathan Konietz, Kelly Chen, and Li Zhu, “Maximizing Evidentiary Efficiencies in Global Patent Litigation,” Landslide, (March/April 2023).
- Kirk Dailey, “Resolving IP Disputes—The Common-Interest Privilege and the Use of Settlement Counsel,” Alternative Dispute Resol. (Mar. 18, 2020).
- Grant H. Hackley, “Patent Incivility Justifies Fee Shifting,” Litigation News (May 12, 2022).
- Katherine G. Vazquez, “Decision Highlights Pitfalls of Ex Parte Witness Interviews,” Litigation News (Mar. 23, 2021).
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