10.10 Appellate review
Although most decisions from district courts are subject to appellate review within the general jurisdiction regional U.S. courts of appeals, in 1982, Congress consolidated jurisdiction over patent appeals in the Federal Circuit. Congress also vested exclusive appellate jurisdiction over USITC and USPTO decisions with the Federal Circuit. The Federal Circuit’s decisions can be appealed to the U.S. Supreme Court.
10.10.1 The U.S. Court of Appeals for the Federal Circuit
The jurisdiction of the Federal Circuit is unique among the 13 U.S. circuit courts of appeals in that it has nationwide jurisdiction over a number of specialized subject matter areas, including appeals on patent claims and compulsory counterclaims from all federal district courts,294 appeals from the United States Court of Federal Claims, appeals from the PTAB, and appeals from the USITC.
The Federal Circuit currently comprises 12 active judges and 7 judges with senior status. Typically, appeals at the Federal Circuit are initially heard and decided by three-judge panels. In some cases, the full court reviews the panel decision en banc. This mechanism can be used to resolve intra-circuit splits on patent issues. The Federal Circuit occasionally orders en banc review sua sponte (without a request from the parties), and amici curiae are invited to file briefs and sometimes to participate in oral argument.
The Federal Circuit also receives petitions for writs of mandamus, which are “available in extraordinary situations to correct a clear abuse of discretion or usurpation of judicial power.”295 As noted in Section 10.6.3, writs of mandamus may be used to order a district court to transfer a case to correct the erroneous denial of a transfer motion.
10.10.1.1 Stay of injunction pending appeal
When an injunction has been issued and an appeal taken, the defendant will often request that the injunction be stayed pending appeal. FRCP 62(c) authorizes a district court, in its discretion, to stay an injunction when an appeal is taken. Moving for a stay of injunction in the district court pursuant to the Federal Rules is a prerequisite to requesting a stay in the Federal Circuit.296 A court can, as a matter of judicial economy, consider a stay at the same time as the motion for permanent injunction.
In considering whether to grant a stay, the court must apply four factors:
- (1) whether the stay applicant has made a strong showing that he is likely to succeed on the merits;
- (2) whether the applicant will be irreparably injured absent a stay;
- (3) whether issuance of the stay will substantially injure the other parties interested in the proceeding; and
- (4) where the public interest lies.297
The requirement of showing irreparable injury to obtain a stay of an injunction is applied stringently because the court has already conducted an analysis finding an injunction appropriate. Thus, irreparable harm, for the purposes of a stay of injunction, is usually not found unless the injunction will put the defendant out of business in the period pending appeal. A stay of injunction may be more appropriate if the defendant has a design-around, particularly if the patented feature is but one component in a multicomponent product. Under those circumstances, a court may stay the injunction and impose an ongoing royalty for the interim period to allow the defendant to continue its business while transitioning to the release of its design-around. The ongoing royalty amount should expressly consider the fact that any ongoing use of the patented invention takes place following the grant of an injunction.298
In the event that the district court denies a stay pending appeal, a party likely will ask the Federal Circuit to grant the stay.299 In conjunction with the request to the Federal Circuit, the party may also request that the district court grant a short stay allowing time for the party to prepare and obtain a ruling on its request from the Federal Circuit. In the event the district court does not grant this request, the party likely also will seek an interim stay from the Federal Circuit.
10.10.1.2 Remands
Following review by the Federal Circuit, some cases return to the district court for further proceedings. Some matters are remanded with specific instructions; others are remanded for further unspecified proceedings consistent with the appellate court’s mandate and opinion.
10.10.2 U.S. Supreme Court
Article III, Section 1 of the U.S. Constitution establishes the Supreme Court of the United States. Since 1869, the Court has had nine Justices. The Constitution provides that, among other things, the Supreme Court has appellate jurisdiction to review decisions of the lower courts.
A party seeking Supreme Court review of an appellate decision must petition the Court for a writ of certiorari, which is a request that the Supreme Court order a lower court (typically a U.S. court of appeals, such as the Federal Circuit, or the highest court in a U.S. state) to send the record of a case to the Supreme Court for review. The Supreme Court’s review of cases on appeal from the Federal Circuit (or indeed, an appeal from any case heard in a lower court) is discretionary. Four of the nine Supreme Court justices must vote to accept a case for review from a lower court. In a typical year, the Court grants certiorari in about 80 of the more than 7,000 cases in which Supreme Court review is requested. The Supreme Court has heard approximately one to two patent cases per year over the past two decades.