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.