Appeals to the Court of Appeals for the Federal Circuit

AuthorKenneth Dorsney
chapter 17
Appeals to the Court of
Appeals for the Federal
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).
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
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).

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