Appeals to the Court of Appeals for the Federal Circuit

• Author: Kenneth Dorsney
• Pages: 417-436

417

chapter 17

Appeals to the Court of

Appeals for the Federal

Circuit1

Mixing law and technology can be complex, especially for district courts

trying to follow the precedent of appellate courts without a steady diet

of patent cases. This complexity led to a lack of uniformity in patent law.

The lack of uniformity and concomitant lack of predictability led to many

calls for specialized courts of one form or another. The Federal Courts

Improvement Act of 19822 established the U.S. Court of Appeals for the

Federal Circuit (or simply Federal Circuit), in part, to provide for the

“‘special need for nationwide uniformity’ in certain areas of the law.”3 The

Federal Circuit is an Article III court under the U.S. Constitution and is a

“co-equal member” of the system of thirteen U.S. Courts of Appeals.4 The

Federal Circuit has nationwide jurisdiction over a number of specialized

legal areas in addition to patent appeals from district courts. A familiarity

with the case law and procedural law from all of the jurisdictional areas

of the court is necessary to place your client in the best possible position

during the appeal. Because the Federal Circuit is the Appeals Court that

hears virtually all patent appeals, and because the Supreme Court does

not frequently review patent cases, the Federal Circuit is often the highest

court for patent appeals.

The Federal Circuit is composed of twelve active judges and currently

has five senior judges who also sit on and resolve cases. Appeals are ran-

domly assigned to panels to provide each judge “with a representative

cross-section of the fields of law within the jurisdiction of the court.”5 Cases

1. Scott A. Chambers, Ph.D., and Michael J. Schaengold, Patton Boggs LLP.

2. Pub. L. No. 97-164, 96 Stat. 25.

3. United States v. Hohri, 482 U.S. 64, 72 (1987).

4. In re Roberts, 846 F.2d 1360, 1362 (Fed. Cir. 1988) (en banc).

5. FED. CIR. R. 47.2(b).

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418

are generally heard by a panel of three judges; however, any odd number

of at least three judges may form the panel.6

Panels of the Federal Circuit are bound by the decisions of the Supreme

Court, the precedential (or published decisions) of the Federal Circuit, and

the decisions of the Federal Circuit’s predecessor courts: the Court of Cus-

toms and Patent Appeals (CCPA) and the Court of Claims.7 A precedential

decision of the Federal Circuit or one of its predecessor courts is binding on

subsequent Federal Circuit panels unless overruled by the Supreme Court

or the Federal Circuit sitting en banc.8 When a conflict occurs between the

decisions of a prior and subsequent panel, the decision of the first panel is

considered precedential as long as it does not conflict with earlier Federal

Circuit precedent or a decision from the Supreme Court.9 Nevertheless,

seeming conflicts can arise from dicta in a case. According to the Federal

Circuit, any statements “beyond what was needed to decide the facts of the

precedential case is properly characterized as dicta.”10 While only state-

ments necessary for the decision are binding, it is wise to consider how you

might respond if your panel comprises the judge who authored the opinion

you are attempting to limit. Naturally, however, your panel will not be

overruling precedent if it is simply “refin[ing] holdings in its precedent

which were stated or have been interpreted too broadly.”11

I. Scope of Review

The Federal Circuit reviews decisions for errors of law de novo,12 but will

not set aside factual findings unless the district court’s factual determina-

tion was clearly erroneous13 or the jury lacked substantial evidence for its

factual finding.14 Thus, even if the Federal Circuit would have come to a

6. FED. CIR. R. 47.2(a).

7. S. Corp. v. United States, 690 F.2d 1368, 1370 (Fed. Cir. 1982) (en banc); Remington

Prods., Inc. v. N. Am. Philips Corp., 892 F.2d 1576, 1579 (Fed. Cir. 1990).

8. Newell Co. v. Kenney Mfg. Co., 864 F.2d 757, 765 (Fed. Cir. 1988); Kimberly-Clark

Corp. v. Fort Howard Paper Co., 772 F.2d 860, 863 (Fed. Cir. 1985).

9. Newell Co., 864 F.2d at 765; Johnston v. IVAC Corp., 885 F.2d 1574, 1579 (Fed. Cir.

1989); see, e.g., Atl. Thermaplastics Co., Inc. v. Taytex Corp., 970 F.2d 834, 838 n.2 (Fed.

Cir. 1992) (refusing to follow a previous case that had not considered earlier Supreme Court

precedent).

10. Mingus Constructors, Inc. v. United States, 812 F.2d 1387, 1394 (Fed. Cir. 1987);

see Hayes v. Dep’t of Health & Human Servs., 829 F.2d 1092, 1105 (Fed. Cir. 1987); Horner

v. Schuck, 843 F.2d 1368, 1377 (Fed. Cir. 1988).

11. Woodward v. Sage Prods., Inc., 818 F.2d 841, 851 (Fed.Cir. 1987) (en banc).

12. Litton Sys., Inc. v. Honeywell Inc., 87 F.3d 1559, 1566 (Fed. Cir. 1996).

13. FED. R. CIV. P. 52(a)(6); SpindelfabrikSuessen-SchurrStahlecker& Grill v. Schubert

&SalzerMaschinenfabrik, 829 F.2d 1075, 1077 (Fed. Cir. 1987).

14. Baxter Healthcare Corp. v. Spectramed, Inc., 49 F.3d 1575, 1582 (Fed. Cir. 1995).