Due to "Walker procedure requirement (Walker Process claim) " Involves the hybrid nature of patent and antitrust law, The courts in the United States are divided on how to create Walker procedural claims under patent law for jurisdictional purposes.

In America, all "Arise from (arising under) " Patent law ( "United States code" The first 35 Ed) The case is in a federal district court (District Court) jurisdiction, And can only be appealed to the Federal Circuit Court of Appeals (Court of Appeals for the Circuit) .

The idea is to provide a unified national system of patent law. however, Not all cases involving patents "Arise from" Patent law. so-called "Walker procedure requirement" From Walker Program Equipment (Walker Process Equipment, Inc. ) V. Food Machinery and Chemical Corporation (Food Machinery & Chemical Corp. ) So named in the case.

In the case, The United States Supreme Court (Supreme Court) adjudication, Enforcement of a fraudulently obtained patent may constitute a basis "Sherman act (Sherman Act) " The basis for the antitrust claim.

The Walker process requires two aspects:

(1) The defendant in an antitrust case enforced a patent, The patent is in knowingly (knowing) And on purpose (willful) Obtained under fraudulent circumstances from the Patent Office;

(2) A plaintiff in an antitrust case must satisfy grounds "Sherman act" All elements necessary to bring an antitrust action.

Therefore, Whether Walker procedural claims may arise under patent law for jurisdictional purposes, May not be simple. In the recent Chandler (Chandler) V. Phoenix Services LTD (Phoenix Services LLC, Hereinafter referred to as "Phoenix Company" ) A case (Hereinafter referred to as "Chandler case" ) In the, The plaintiff sued the defendant to enforce a patent, The patent was held unenforceable in another case because of unfair practices. The Court of Appeals for the Federal Circuit held, The Walker procedural requirement in this case does not arise under patent law, And sent the case to the 5th Circuit Court of Appeals.

In a precedent opinion, Collegiate panel (panel) reiterate, The exclusive jurisdiction of the Court of Appeals for the Federal Circuit over patent matters applies only in the following circumstances:

(1) "A cause of action arising from federal patent law" ; or

(2) "The plaintiff's right to relief necessarily depends on the resolution of substantive questions of federal patent law" . Because the case was based after the patent in question had been declared unenforceable in another case "Sherman act" generated, The court therefore found that it lacked jurisdiction over the Walker procedural claim.

The antitrust action in the Chandler case stems from the execution by defendant Phoenix of its subsidiary Hot Fly LTD (HeatOn-The-Fly, LLC, Hereinafter referred to as "Hot fly company" ) Patent of (Hereinafter referred to as "993 patent" ) . 993 The patent claims protection for hydraulic fracturing (fracking) Specific methods and devices for heating water. When Hot Fly filed its patent application, It does not disclose many prior art already in sale and in public use that could invalidate patents. 993 After the patent is patented, Hot Fly aggressively enforced the patent against its competitors, Among them is Chandler, the plaintiff in the case. One of its competitors has filed a separate lawsuit against Hot Fly, And obtained a declaratory judgment, namely 993 Patents are unenforceable because of unfair practices.

The Court of Appeals for the Federal Circuit affirmed the ruling. The plaintiffs in the Chandler case filed an antitrust suit, The charges are pending pending appeal of the unfair conduct findings 993 patent. The district court held that, These facts constitute anti-competitive conduct, And allow the Walker process to proceed. "The Walker procedure asks whether the Court of Appeals for the Federal Circuit has exclusive jurisdiction over matters arising under patent law" The problem of, It becomes an appellate "threshold" .

Heatley v. Kolei is not the first time jurisdiction over Walker's procedural claims has been brought before the Federal Circuit. At the Heatley Company (Xitronix Corp. ) V. Kelei Company (KLA-Tencor Corp. ) A case (Hereinafter referred to as "The Heatley case" ) In the, The plaintiff is based on the patent owner's enforcement of a valid patent, Independent Walker process antitrust requirements are proposed. The Court of Appeals for the federal Circuit continues to hold that it lacks jurisdiction, Because the case did not raise substantive questions about patent law.

Although the fundamental question of whether patents are fraudulently obtained has shifted to patent law, But none of the patents will be found invalid or reinstated as a result of this case. The court also cited 2013 The United States Supreme Court in Gunn (Gunn) V. Minton (Minton) A case (Hereinafter referred to as "Gunn case" ) Judgment in——The judgment held that, Out of "United States code" The first 28 edit 1338 article (Grant exclusive jurisdiction to a federal district court) purpose, Even if there is a need to address patent law, But the patent agent malpractice suit is still not "Arise from" Patent law case. Consistent with the Gunn case, The Court of Appeals for the Federal Circuit argued in Heatley: Allow state courts to decide "Case within case" Addressing the issue of misrepresentation to the Patent Office would not disrupt the unity of federal patent law, Because the results are limited to specific parties and patents.

After the Federal Circuit Court of Appeals found it lacked jurisdiction, The case was referred to the Fifth Circuit Court of Appeals. Strangely enough, The Fifth Circuit referred the case back to the Federal Circuit, The latter conclusion is not considered credible. The Fifth Circuit ruled that Gunn did not apply, Because the Gunn case explains "United States code" The first 1338 article, Rather than control 1295 article. It also cited two precedents from the Federal Circuit Court of Appeals——At Nobel Pharmaceuticals (Nobelpharma AB) Sue the implant innovation company (Implant Innovations, Inc. ) case (Hereinafter referred to as "Nobel pharmaceutical case" ) In the, The court held that the Federal Circuit Act (Not the local method) Applicable to Walker program requirements; Antitrust action in iprofloxacin hydrochloride (Hereinafter referred to as "The isoprofloxacin case" ) Under review, The court ruled on Walker's procedural claim, And wrote in a footnote: "Found fraud at the Patent and Trademark Office, Substantive issues of patent law are bound to arise" ——The implied independent Walker process requires an appeal to the Court of Appeals for the Federal Circuit. procedurally, As long as the jurisdiction is reasonable, The court that accepts the transferred case shall accept the case. According to rationality analysis, The Court of Appeals for the Federal Circuit accepted jurisdiction in a non-precedent-setting opinion, And finally tried the Heatley case on its merits.

The Federal Circuit Court of Appeals on the Chandler decision The Federal Circuit's panel dealing with the Chandler case reached its conclusion for a variety of reasons, The court lacks jurisdiction over the appeal: First of all, It's not like the Heatley case, Chandler didn't even raise jurisdiction "reasonable (plausible) " foundation, Because the patents that form the basis of the case have been ruled unenforceable. however, Although the state of the underlying patent is an important factor, The court still noted that it should not be conclusive.

The Court's main concern is, If appellate jurisdiction is determined only by whether the patent is still valid and enforceable, So this creates an arbitrary split, A claim involving a valid patent would go to the Court of Appeals for the Federal Circuit, Claims involving expired patents would go to the District Circuit Court of Appeals, Even if the legal requirements are the same.

secondly, The Fifth Circuit's jurisdiction over plaintiffs' Walker procedural claims would not undermine the uniform system of federal patent law. As explained in the Heatley case, just "Another circuit court of Appeals made a wrong decision on patent law" Risk of, Is not enough to shake the exclusive jurisdiction of the federal Circuit. Because of the outcome of this case "Limited to the parties and the patents in question" , It would not have ripple effects throughout the patent law system. In addition, because 993 The patent has been declared unenforceable in a separate lawsuit, There is therefore little need for the appellate court in this case to delve into the question of substantive patent law.

third, The court's decision was consistent with precedent. Although the Nobel Pharmaceutical case held that the Federal Circuit, not the District Circuit, law applies to Walker's procedural requirements, But jurisdiction and choice of law are different issues. In the case of iprofloxacin and Heatley, In cases where the court ultimately exercises jurisdiction over some Walker procedural claims, Jurisdictional issues are subject to a lower standard of reasonableness rather than being reopened (de novo) standard-reviewed. The court also disagreed with the Fifth Circuit Court of Appeals in Heatley v "United States code" The first 1295 Articles and regulations 1338 Interpretation of article, And held that the two provisions were not separated from each other, as the Fifth Circuit had suggested.

Conclusion The Fifth Circuit has not yet reacted to the Chandler decision. But given the differing views of the 5th Circuit and the Federal Circuit, Jurisdiction over Walker's procedural claims may become a limited one, A case-specific investigation.

(Compiled from www. quinnemanuel. com)

Reprinted from China Intellectual Property Network   translation: Cheng Yu　proofread: Liu Peng

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