Federal Circuit Holds Sway in Patent Appeals

• Pages: 23-23
• Date: 01 July 2024
• Author: David E. Dobin
• Subject Matter: Civil Law

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 ghts

arising from them, ABA Litigation Section leaders state.

In Fraunhofer-Gesellschaft Zur Forderung Der Angewand

v. Sirius XM Radio Inc., the plaintiff led a patent infringe-

ment 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 led 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 led in the U.S.

District Court for the District of Columbia.

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 dis-

covery proceedings ancillary to a patent suit. On this point,

while the court recognized that the district court’s “rst-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 hold-

ing that those rules “do not confer subject matter jurisdiction

upon the courts.”

Instead, the court concluded that because the underly-

ing 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 pat-

ent 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 “nal 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.

“The decision appears contrary to the policy rationale

behind Rule 45, which encourages discovery rulings in wit-

nesses’ 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 “reason-

ably 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.

RESOURCES

Selena Kim , Jonathan Konietz, Kel ly Chen, and Li Zhu, “ Maximizing

Evidentiary E ciencies in Globa l Patent Litigation,” Landslide

(Ma r./Apr. 20 23).

Kirk Dailey, “Resolving IP Disputes—The Common-Interest

Privilege an d the Use of Settlement C ounsel,” Alt. Dispute R esol.

(Mar. 18, 2020).

Grant H. Ha ckley, “Patent Incivilit y Justif‌ies Fee Shift ing,”

Litigation News (May 12 , 2022).

Katherine G . Vazquez, “Decision Hi ghlights Pitfalls of E x Parte

Witness Interviews,” Litigation News (Mar. 23, 202 1).

Federal Circuit Holds Sway in Patent

Appeals

By David E. Dobin, Litigation News Cont ributing Edit or

SUMMER 2 024 • VOL. 49 NO. 4

23 | ABA LITIGATION SECTIO N

CIVIL PROCEDURE UPDATE