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Emory University School of Law




By statute, all cases “arising under” patent law must be heard exclusively by the federal courts (not state courts) and, on appeal, by the Federal Circuit (not the twelve regional circuits). But not all cases involving patents “arise under” patent law. As recently as 2013, the Supreme Court ruled that the mere need to apply patent law in, for example, a malpractice case involving a patent lawyer, is insufficient to trigger exclusive jurisdiction. Rather, the Court held, for a case that does not involve claims of patent infringement to arise under patent law, the patent issue must be “important . . . to the federal system as a whole.”

Despite the Supreme Court’s holding that “fact-bound and situation-specific” patent issues do not warrant exclusive jurisdiction outside of infringement cases, the lower courts’ precedent in this area remains unsettled. The Federal Circuit has, at times, tried to resurrect its older case law extending exclusive jurisdiction to practically any patent-related tort, contract, or antitrust case. But, in other decisions, the Federal Circuit has constricted jurisdiction so dramatically that the Fifth Circuit recently refused to accept a case transferred to it by the Federal Circuit, deriding the Federal Circuit’s jurisdictional ruling as not just wrong but “implausible.” All of this uncertainty incentivizes costly and wasteful procedural maneuvering in a field where litigation is already expensive.

This Article is the first to chronicle the rising confusion about the scope of the federal district courts’ and the Federal Circuit’s exclusive jurisdiction over cases arising under patent law. The Article critiques the case law emerging in the lower federal courts and proposes a jurisdictional rule that is both clear and consistent with Supreme Court precedent: For a case that does not involve claims of patent infringement to nevertheless arise under patent law, it must present a dispute about the content of federal patent law or a question about the interpretation or validity of the federal patent statute; questions about the validity or scope of a particular patent are not sufficient.

In arguing for this new approach, the Article also engages broader questions about the jurisdictional structure of patent litigation. Among other things, it suggests that the courts or Congress should rethink longstanding doctrine that makes the test for Federal Circuit appellate jurisdiction identical to the test for exclusive original jurisdiction in the district courts. Exclusive district court jurisdiction entirely precludes state courts from shaping their own state’s law, so federal courts should be hesitant to exercise jurisdiction over a tort or contract claim simply because there is a patent lurking in the background. But when a patent-related case is properly in federal district court, the Federal Circuit’s expertise in patent law and ability to provide uniformity counsel in favor of giving the court a broad scope of appellate jurisdiction.

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