Digest of Jang v. Boston Scientific Corp., No. 2014-134 (Fed. Cir. Sept. 16, 2014) (precedential). On petition for interlocutory appeal from C.D. Cal. Before Dyk, Plager, and Linn.

Procedural posture: Defendants filed a petition for interlocutory appeal of the district court’s denial of summary judgment on the issue of whether a patent assignment agreement could require payment for practice of patent claims subsequently held to be invalid by the USPTO. CAFC ordered the parties to address whether the CAFC has jurisdiction over this petition or whether the petition should be transferred to the 9th Circuit. CAFC declined to transfer and denied the petition for interlocutory review.

  • Subject Matter Jurisdiction: Although the case arose from a contract claim, rather than directly from a patent infringement claim, Respondent’s right to relief on the contract claim depended on an issue of federal patent law—whether the products sold by Petitioners would have infringed Respondent’s patents. The CAFC concluded that maintaining jurisdiction over such contract disputes to avoid conflicting rulings between regional circuits and the CAFC was important.
  • Appellate Jurisdiction: Respondent argued the USPTO’s cancellation of the patent claims at issue meant that the patent validity issue was no longer substantial, and therefore, the CAFC no longer had appellate jurisdiction. The CAFC disagreed, relying on precedent to note that the CAFC’s exclusive appellate jurisdiction is predicated on the cause of action and the basis of the facts as they existed at the time the complaint or any compulsory counterclaim was filed. The CAFC concluded that since the four-part test for jurisdiction set forth in Gunn v. Minton, 133 S. Ct. 1059 (2013) was met at the time the complaint was filed, jurisdiction properly remained before the CAFC.
  • Interlocutory Appeal: The CAFC noted that it must exercise its own discretion in deciding a petition for interlocutory appeal, that is, in deciding whether the district court order involves a controlling question of law as to which there is substantial ground for difference of opinion, and whether an immediate appeal from the order may materially advance the ultimate termination of the litigation. The CAFC found that it was not clear that the legal issues in this case would in fact be controlling, and further, the legal issues depended on the resolution of factual issues not yet addressed by the district court. Therefore, the CAFC denied the petition for interlocutory appeal.