Wawrzynski appealed both of the district court’s rulings. The Federal Circuit asked the parties to address (1) whether the pre- or post-America Invents Act (“AIA”) version of 28 U.S.C. § 1295(a)(1) governed the case, and (2) whether the Court had jurisdiction under the governing version of § 1295(a)(1). Both parties argued that the Federal Circuit had jurisdiction but for different reasons.

The court concluded that it did not.The statutory source of the Federal Circuit’s jurisdiction is 28 U.S.C. § 1295(a)(1), which states that the court’s jurisdiction extends to appeals from the district courts “in any civil action arising under, or in any civil action in which a party has asserted a compulsory counterclaim arising under, any Act of Congress relating to patents.” However, not all appeals “relating to patents” fall under the Federal Circuit’s jurisdiction, only those casesin which a well-pleaded complaint establishes either that federal patent law creates the cause of action or that the plaintiff’s right to relief necessarily depends on resolution of a substantial question of federal patent law, in that patent law is a necessary element of one of the well-pleaded claims.

14 Although the investigation was set to move forward, certain respondents,15 having lost on the standing issue at the ITC, filed a petition for review of the Commission’s determination with the Federal Circuit.16 Believing that the respondents’ appeal was premature, the Commission, as appellee,17 and Andrea Electronics, as an intervenor, jointly filed a motion to dismiss the respondents’ petition for review, arguing that the Federal Circuit lacked jurisdiction to hear the appeal.18 Under 28 U.S.C. § 1295(a)(6), the Federal Circuit has the authority to review “the final determinations of the United States International Trade Commission relating to unfair practices in import trade, made under section 337 of the Tariff Act of 1930 (19 U.S.C. 1337)” (emphasis added). Pepper, along with the ITC attorneys, argued that the Commission’s 100-day determination on standing was not a reviewable final determination under 28 U.S.C. § 1295(a)(6).

CAFC Opinion, No CAFC ArgumentState of Vermont v. MPHJ Technology Investments, LLC, No. 15-838Question Presented:In the America Invents Act, Congress amended the jurisdictional statutes relating to patent cases in response to this Court's decision in Holmes Group, Inc. v. Vornado Air Circulation Systems, Inc., 535 U.S. 826 (2002). In Holmes Group, the Court held that a defendant's compulsory counterclaim for patent infringement did not establish “arising under” jurisdiction for purposes of the Federal Circuit's appellate jurisdiction under 28 U.S.C. § 1295. The America Invents Act amended § 1295(a) to provide Federal Circuit jurisdiction over an appeal from a final decision of a district court “in any civil action arising under, or in any civil action in which a party has asserted a compulsory counterclaim arising under, any Act of Congress relating to patents.”

In this case, the Board denied institution based on two co-pending district court infringement actions brought by Janssen Pharmaceutica—one against Mylan Laboratories and the other against Teva Pharmaceuticals. In balancing the NHK-Fintiv factors to deny institution, the Board reasoned that both district court proceedings involved substantially similar invalidity contentions as Mylan’s IPR petition and were set (or likely to be set) for trial prior to the mandatory deadline for Board to issue a Final Written Decision in the IPR.Mylan sought both direct appellate review of this denial under 28 U.S.C. § 1295(a)(4)(A) and mandamus relief under 28 U.S.C. § 1651. Mylan made the same two legal assertions in its appeal and request for mandamus relief. First it argued that the Board’s denial of institution based on the timing of the Teva litigation undermines Mylan’s constitutional due process rights.

Finally, Elbit’s expert’s reliance on Hughes’s customer-specific revenues from relevant products was appropriate because it was not company-wide revenue, and did not involve the overall multi-component product (moreover, Hughes never objected at trial to this evidence or testimony).As to the exceptional case determination, the Court concluded that it did not have jurisdiction to review the award or the exceptional case finding because the district court did not quantify the fee amount; as such, the decision was not a “final decision” under 28 U.S.C. §1295. In coming to this conclusion, the Court first analogized section 1295 to section 1291 and relied upon the reasoning in Budinich v. Becton Dickonson & Co., 486 U.S. 196 (1988), a case decided by the Supreme Court in which it held that a decision on the merits is “final” for purposes of section 1291 regardless of whether there remains for adjudication a request for attorney’s fees.

Order Granting Stay of Claims Not an Appealable Final Judgment or Effectively an Injunction 11-1019 September 26, 2011 Decision Last Month at the Federal Circuit - October 2011Judges: Rader, Lourie, O’Malley (author) [Appealed from: N.D. Ill., Judge Gettleman] In Spread Spectrum Screening LLC v. Eastman Kodak Co., No. 11-1019 (Fed. Cir. Sept. 26, 2011), the Federal Circuit held that a district court order staying claims against customers of an accused infringer was not an appealable final judgment under 28 U.S.C. § 1295 and not “effectively an injunction” appealable under 28 U.S.C. § 1292(a)(1). Spread Spectrum Screening LLC (“S3”) owns U.S. Patent No. 5,689,623 (“the ’623 patent”) drawn to methods and systems for commercial printing technology called “digital half-toning.”

Applying this standard to this case, the Court held that the contempt order did not prolong, extend, or in any other way impact the duration of the preliminary injunction, and thus could not be interpreted as “continuing” the injunction. The Federal Circuit also rejected Pall’s alternative argument that there was jurisdiction over Pall’s appeal under the final judgment rule, codified as 28 U.S.C. § 1295(a). Pall argued that the contempt order was final within the meaning of § 1295(a) because a fine had been assessed against Pall.

ELBIT SYSTEMS LAND AND C4I LTD. v. HUGHES NETWORK SYSTEMS, LLCBefore Taranto, Mayer, and Chen. Appeal from the United States District Court for the Eastern District of Texas.Summary: Neither 28 U.S.C. § 1295 nor 28 U.S.C. § 1292(c)(2) provide appellate jurisdiction to review an attorney fees award if the amount of attorney fees has not yet been quantified.Elbit Systems Land and C4I Ltd. and Elbit Systems of America, LLC (collectively “Elbit”) sued Hughes Network Systems, LLC for patent infringement. The jury found certain asserted claims were infringed and not invalid, and it awarded damages.

Amarin Pharma, Inc. v. Int’l Trade Comm’n, No. 2018-114, 2019 WL 1925649 (Fed. Cir. May 1, 2019). The appeal arose from Amarin’s petition for review pursuant to 28 U.S.C. § 1295(a)(6) and its simultaneously-filed mandamus petition, and in the majority opinion authored by Chief Judge Prost and joined by Judge Hughes, the Court held that it had ordinary appellate jurisdiction to review the non-institution decision as a “final decision” by the ITC under § 1295(a)(6) and did not reach Amarin’s mandamus arguments. In dissent, Judge Wallach would have declined to find appellate jurisdiction under § 1295(a)(6) but would have granted mandamus review.