Deciding Who Decides Intellectual Property Appeals

Article Source: Federal Circuit Bar Journal, Vol. 19, pg. 379, 2010
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The author argues that the Supreme Court’s decision in Holmes Group was decided on an incorrect basis.


Policy Relevance:

The Supreme Court decided <em>Holmes Group</em> incorrectly, which had less to do with the usual critique of a lack of patent expertise and more to do with misreading the “except” clause. This should raise concerns about the allocation of authority among all appeals courts for intellectual property.


Key Takeaways:
  • The Federal Circuit is the U.S. Court of Appeals with jurisdiction over patent appeals, this jurisdiction was narrowed by the Supreme Court’s decision in Holmes Group v. Vornado Air Circulation Systems, Inc.
  • The Supreme Court looked past the “except” clause in 28 U.S.C. § 1295, the statute that determines where intellectual property appeals go—to the Federal Circuit or to regional circuit courts. This oversight resulted in the case being decided wrongly.
  • Holmes Group has resulted in putting the resolution of some patent cases out of the Federal Circuit’s jurisdiction, which now allows a party anticipating being sued to strategically frame their case for a more favorable forum.
  • Holmes Group now stands for the notion that “arising under” jurisdiction does not rest upon a counterclaim, which means that the Federal Circuit has narrower jurisdiction over certain claims.
  • A legislative response to Holmes Group could expand the Federal Circuit’s jurisdiction to pre-Holmes scope; however right now this solution does not appear to be worth the trouble.
  • Some of the criticisms of Supreme Court supervision of the Federal Circuit could be reduced by allocating appellate authority among appeals courts and thereby providing more opportunities for issues such as the one in Holmes Group to be decided before making it up to Supreme Court review.
  • By missing the key issue in Holmes Group, the Supreme Court made more obstacles to legislative amendment and also made the effect of the “except clause” more confusing on appeals of new forms of intellectual property.



C. Scott Hemphill

About C. Scott Hemphill

Scott Hemphill is a professor of law at New York University School of Law where his research and teaching examine the balance between innovation and competition set by antitrust law, intellectual property, and other forms of regulation. His recent work considers competition in the pharmaceutical industry (in particular, “pay-for-delay” cases, which was a critical contribution to discourse leading to the Supreme Court’s 2013 decision in FTC v.