Appellate Jurisdiction: Its No Longer a Patent Case (and thus no Fed. Cir. Jurisdiction) when the Patent Claim is Voluntarily Dismissed

by Dennis Crouch

Predator Int’l v. Gamo Outdoor (10th Cir. 2015)

In this decision, the Court of Appeals for the Tenth Circuit (10th Cir.) has held that it has jurisdiction over an appeal of a would-be patent case because the complaint was amended prior to final judgment to drop the patent claim.

Federal Circuit jurisdiction over patent appeals is an exception to the usual rule that district court decisions are appealed to the respective regional circuit court of appeal. Under pre-AIA statute, the Federal Circuit takes jurisdiction over appeals of final decisions in “any civil action arising under any Act of Congress relating to patents.” 28 U.S.C. 1338; 28 U.S.C. 1295.  So called “arising-under” jurisdiction is a term of art in civil procedure and follows the “well-pled complaint rule” by requiring the patent law question appear on the face of the plaintiff’s complaint as outlined in the Supreme Court’s 2002 decision on point. Holmes Grp., Inc. v. Vornado Air Circulation Sys., Inc., 534 U.S. 826 (2002).

The question here though was – what happens when the patent claim appears in original complaint but not the amended complaint.  The 10th Circuit panel decided that the amendment robbed the Federal Circuit of Jurisdiction:

Section 1295(a)(1) might seem to deprive this court of jurisdiction because a claim for patent infringement was included in Predator’s original complaint. . . . But at the time of Cogswell’s notice of appeal, the most recent complaint was Predator’s fourth amended complaint, . . . which did not contain a patent-infringement claim. And it is that complaint which governs our jurisdiction.

In a parallel situation, the Federal Circuit also held that it lacked lacked jurisdiction over an appeal where the patent claim had been voluntarily dismissed without prejudice prior to final judgment. Gronholz v. Sears, Roebuck & Co., 836 F.2d 515 (Fed. Cir. 1987). In Holmes Grp., Inc. v. Vornado Air Circulation Sys., Inc., 535 U.S. 826 (2002), Justice Stevens wrote a concurring opinion also arguing for the same result – that “if the only patent count in a multicount complaint was voluntarily dismissed in advance of trial, it would seem . . . clear that the appeal should be taken to the appropriate regional court of appeals rather than to the Federal Circuit.”

However, the majority opinion in Holmes Group leaves the question open — expressly indicating that “this case does not call upon us to decide whether the Federal Circuit’s jurisdiction is fixed with reference to the complaint as initially filed or whether an actual or constructive amendment to the complaint raising a patent-law claim can provide the foundation for the Federal Circuit’s jurisdiction.” (note 1).

An odd element of this result is that the appellate jurisdiction of a multi-claim case will be malleable up until final judgment.

= = = = =

AIA Changes to Jurisdiction: The AIA amended the jurisdiction statutes to (1) ensure district court’s have jurisdiction over all cases involving “any claim for relief” arising under the US patent laws; and (2) provide the appellate court with jurisdiction when cases either “arise under” the patent law  or where a party “has asserted a compulsory counterclaim arising under” the patent law.  These changes were seen as overruling the prior rule from Holmes Group that the existence of a patent law counterclaim in the answer-pleading (rather than claim in the complaint).

These changes don’t appear to directly impact the outcome except that the language “has asserted” could suggest that jurisdiction is created if the patent counterclaim is ever asserted (even if later dropped).   And, that difference in language seems to me to suggest that Congress was thinking about the scope of the original complaint defining appellate jurisdiction – though quite implicitly.

In any event, the policy goal behind all of this is to maintain a single appellate court for deciding patent issues, and the outcome decided by the 10th Circuit here very much continues that goal.

= = = = =


Predator v. Gamo began when Predator filed its patent infringement lawsuit against Gamo, asserting infringement of U.S. Patent No. 6,526,893 (covering a lead air-rifle pellet with polymeric tip) along allegations of trade dress and copyright infringement.  Fairly soon thereafter, a glaring problem emerged with the patent claim.  One of the listed co-inventors (Lee Phillips) came forward claiming that he retained partial ownership of the patent rights.  At that point, the patentee voluntarily dismissed the patent claim in order to to fight a state-court battle over patent ownership, which then became more complicated when Gamo purchased Phillips purported interest and intervened in the state court action.

With the state-court case going south (including a failed motion to recuse that judge), the patentee returned to Federal Court with a motion to supplement and amend its complaint — by both reviving its original infringement complaint and adding a challenge to Gamo’s claimed ownership rights.  However, the district court refused to permit the changes and also awarded $10,000 in sanctions against Predator’s attorney John Cogswell for improperly gaming the system, the district court awarded $10,000 in sanctions.  Cogswell then appealed that ruling to the 10th Circuit Court of Appeals.

After determining that it had jurisdiction (as discussed above), the court then reversed the lower court’s sanctions order — finding that Predator had properly justified its delay in seeking to add the claims and thus were not sanctionable.

Ironically, if, on remand the district court reconsiders and allows the complaint to be amended again to add the patent claim then suddenly apparent appellate jurisdiction would shift again to the Federal Circuit.



29 thoughts on “Appellate Jurisdiction: Its No Longer a Patent Case (and thus no Fed. Cir. Jurisdiction) when the Patent Claim is Voluntarily Dismissed

  1. 3

    Would a Federal statute of limitations for secret [previously unasserted] inventorship and/or ownership rights [stale claims] in a patent be a good idea?

    1. 3.1


      For a variety of reasons, including the fact that how you phrased your question conflates inventorship and ownership, the fact that for patents, there already is laches, and a host of other points.

    2. 3.2

      Paul, there are multiple problems here, all caused by the Federal Circuit.

      1. FilmTec, that even the Supreme Court has admonished the Federal Circuit is wrong on the law. Rather than getting a clue, the Feds have recently double-down. Where is the world do they get the gumption? Filmtec recognizes present assignment of future (unidentified) inventions as being present legal assignment instead of an equitable assignment that requires a subsequent formal assignment to perfect.

      2. When they decided standing was a matter of Federal Law, they blew by state law statute of limitations that would bar a direct claim by a purported owner. This coupled with FilmTec allows “assignees” to claim legal ownership of inventions decades later regardless of any statute of limitations.

      3. The AIA laid to one side that a patent might be invalid for not naming inventors properly. But the wildcard is the idea that a non named inventor that should have been named can license/assign his or her interest without the consent of the other owners. This means that the issue of inventorship is not going to go away, because defendants can raise claim to have received a license/ownership from the non named inventor, and proceed to prove that he should have been named.

      Three strikes and you’re out does not seem to apply to the Federal Circuit.

      1. 3.2.1

        Ned, I also do not understand how the Federal Circuit can ignore applicable state contract law for employee invention assignment contracts [as they did in the Stamford case], and state statutes of limitations for patent ownership claims, and create a “federal” contract law for private contracts. Perhaps some other Circuit getting such a case will get this corrected?
        But it may take unacceptable new legislation to preclude previously unassigned interests of a co-owner of a patent from being able to sell their ownership interest to whomever they want to.

        Inventorship and ownership issues are of course often directly intertwined, as you know. In particular, where one alleged joint inventor did not originally assign patent rights to any entity, having been left off of the application – i.e., not originally named as an inventor. If there is clear case law on laches for delayed assertions of alleged joint ownership by such an alleged joint inventor, I do not recall it.
        Of course joint ownership can also be caused by assignments of joint inventors to different entities [as some Universities actually require and get foolishly accepted in some some R&D contracts with private industries].


          P.S. With no proposed legislative change on this subject one has to live with this statutory provision in the U.S. even though it is inconsistent with the law for the same invention when filed in some other countries:
          “35 U.S.C. 262 Joint owners.
          In the absence of any agreement to the contrary, each of the joint owners of a patent may make, use, offer to sell, or sell the patented invention within the United States, or import the patented invention into the United States, without the consent of and without accounting to the other owners.”


            But the statute says nothing about licensing others or selling one’s interest. The statute only expresses the common law right of a co-owner of property to use it.

            The statute was on the books when the Supreme Court decided the cases that all owners needed to agree to license/enforce a patent. So nothing has changed at the statutory level to overturn these controlling cases that the Federal Circuit seems to ignore.


              And there is no common law right to license others to enter/use/exploit the property? Poppycock. The only requirement in that regard was to not exclude the other tenants and to account. 35 USC 262 removes the requirement to account.


          Inventorship is indeed a Federal issue. There is no SOL for a 256 action. Perhaps we need one, now that improper inventorship is no longer a basis for invalidity since 102(f) is repealed.


            Ned, I wish you would not continue to to say that “improper inventorship is no longer a basis for invalidity.” Proper inventorship on a patent is still required by 35 USC 101. Also. 35 USC 111 requires a declaration under penalty of perjury of proper inventorship. The latter could easily render a patent unenforceable if false and not corrected.

            BTW, on another serious issue re joint ownership of patents I agree with your previously expressed view that compulsory joinder of the other co-owners ought to be possible.


              Paul, since 1790, 101 has been with us — and since 1790, improper inventorship was listed as a defense. No one, ever, in any case, ever, consider that 101 included a requirement that the named inventorship be “proper.”

              The defense was moved by Federico into 102 in ’52 in 102(f). 102(f) has been repealed. 256 has been amended to specifically say that a patent shall not be invalid for improper inventorship — simply correct the inventorship if it becomes and issue.

              The oath no longer requires that the affiant say that the inventorship is correct, just that the affiant is an inventor.

              There in no possibility of invalidity or fraud on the PTO for improper inventorship. That is a fiction. It will be a cold day in Hades before any court will declare a patent invalid because a named inventor was not an inventor, or one was omitted, given the commands of 256.

              256 in part, now reads,

              “b) Patent Valid if Error Corrected.— The error of omitting inventors or naming persons who are not inventors shall not invalidate the patent in which such error occurred if it can be corrected as provided in this section. The court before which such matter is called in question may order correction of the patent on notice and hearing of all parties concerned and the Director shall issue a certificate accordingly.”


                So what we have is the wildcard inventor problem where an omitted inventor can cause “necessary party” problems and can ruin an infringement case by granting a license to or selling his interest to the accused infringer.

                I think we need to allow a court to determine inventorship in a case where the issue is raise; and have an an alleged omitted inventor involuntarily joined as a plaintiff with no right that this wildcard inventor can grant licenses to or sell his interest to the accused infringer.

                I think this IS the law under Supreme Court authority. But if the Supreme Court does not unscrew the mess the Federal Circuit has created, perhaps we need a legislative fix.

  2. 2

    anon, but the idea that a single owner can convey a license to the whole patent while owning only a share is a problem. Ditto being able to convey an undivided interest in the whole patent — thereby “robbing” their co-owner of their investment. Being able to work the patent without consent of their co-owners is one thing. Being able to take the benefit of the whole property to the exclusion of their co-owners is quite another.

    The Supreme Court said it all back in the day. All owners need to consent to bring suit, to license and to convey. That makes sense. The current state of the law in the Federal Circuit makes no sense. How they got to this point is irrelevant. They are wrong on the law once more.

    1. 2.2

      The Supreme Court said it all back in the day. All owners need to consent to bring suit, to license and to convey. That makes sense.

      Citation needed.

      1. All owners need to consent to bring suit. True. Schering Corp. v. Roussel–UCLAF SA, 104 F.3d 341, 345 (Fed.Cir. 1997). Thus if a joint owner denies consent, the result may be the same as if that joint owner granted a license (pending a cert. decision in STC.UNM v. Intel Corp concerning involuntary joinder).

      2. All owners need to consent to license. Citation needed. You reference 35 USC 262 ( and note that it doesn’t say “license,” but you ignore 35 USC 261 which says that “Subject to the provisions of this title, patents shall have the attributes of personal property.” There is no dispute that an owner can license another to use the owner’s personal property. 35 USC 262 simply removes both the ability to sue a joint inventor for infringement and the traditional requirement for an accounting to other tenants in common. If you insist that 35 USC 262 is an exclusive list of the activities permitted by a joint owner, then you need to cite that authority.

      3. All owners need to consent to convey. False. See 35 USC 261. There is no obligation for a tenant in common to obtain consent to sell their interest — you’re either thinking of a joint tenancy or additional restrictions that are specified by contract. Patents are issued to inventors as tenants in common. Ethicon v. U.S. Surgical Corp., 135 F.3d 1456 (Fed. Cir. 1998) (Newman, in dissent). If it were a joint tenancy so as to require consent for a sale of the inventor’s interest, then the inventor’s rights would also go the joint inventors upon his or her death (as required in a joint tenancy) by default, rather than to any heirs. I assume that you’re not arguing that the latter situation is the case.

      Being able to take the benefit of the whole property to the exclusion of their co-owners is quite another.

      There is no exclusion of the other co-owners. They retain the ability to practice as well as to license others. You’re implicitly assuming that the co-owners are entitled to licensing revenue from the patent, but oddly enough not actual revenue from sale of the patented invention. I’d like see an authority that justifies that assumption.

      1. 2.2.1

        Ned: “The Supreme Court said it all back in the day. All owners need to consent to bring suit, to license and to convey. That makes sense.”

        Citation needed.

        Waterman v. Mackenzie, 138 U.S. 252, 11 S. Ct. 334, 34 L. Ed. 923 (1891).

        The monopoly thus granted is one entire thing, and cannot be divided into parts, except as authorized by those laws.

        The patentee or his assigns may, by instrument in writing, assign, grant and convey, either, 1st, the whole patent, comprising the exclusive right to make, use and vend the invention throughout the United States; or, 2d, an undivided part or share of that exclusive right; or…

        [Nothing is said here about anybody but the patentee being able to assign.]

        A transfer of either of these three kinds of interests is an assignment, properly speaking, and vests in the assignee a title in so much of the patent itself, with a right to sue infringers; in the second case, jointly with the assignor;

        [Note the ability to act is still limited to joint action.]

        Cites include Paper-Bag Cases, 105 US 766 – Supreme Court 1881

        While there is no testimony in the case showing any instrument in writing by which the other patentees united in a license for the use of this machine, we are entirely satisfied that they gave their assent to what was done by Charles H. Morgan, and are in no condition to claim adversely to the license which he undertook to grant.

        [Clearly, all owners had to agree to the license.]

        261 allows
        “Applications for patent, patents, or any interest therein, shall be assignable in law by an instrument in writing.”

        There is nothing in this that is inconsistent with Waterman.


          Tenants in common can bring suit on their own, license on their own, sell on their own and use the common property.

          Joint tenants cannot bring suit on their own, license on their own, sell on their own, but they can use the common property.

          The Supreme Court clearly held that patents are held jointly.

          262 actually states that ownership is “joint.”

          The Federal Circuit is not following the law as laid down by the Supreme Court.


            I see no language distinguishing ownership as joint tenants and not tenants in common. You also fail to deal with the necessary resul of joint tenancy – automatic transfer to the other joint tenants upon death, not an interest inheritable by heirs.

            Your thesis is that the Federal Circuit is wrong. Again, prove it.


              I just did. The Federal Circuit does not recognize that ownership is joint for the purposes of enforcement, licensing and third party sales.

              As to partial shares and inheritance, the Supreme Court has never addressed this issue and the statutes are not inconsistent with the idea that less than an proportionate share of the whole might be owned.

              Regarding heirs, ditto.

              Patents seem to be a hybrid ownership type — neither wholly joint and neither wholly common.

              But, as I said, just because some aspects are like tenants in common does not mean that all aspects are. A tenant in common can sue in his own right. A joint tenant cannot. It is not consistent to follow this Supreme Court rule and not follow all other aspect of joint tenancy law on enforceability and licensing.


          2d, an undivided part or share of that exclusive right;

          Your own citation betrays you, for that is the interest of an individual joint inventor.

          Never mind that secs. 261 and 262 trump 1800s common law, and that you fail to deal with the entire issue of tenants in common.


            DRJLaw, but you seem to not understand the law of joint tenancy. There can be multiple owners. So what? The issue is whether they have to act jointly in licensing or selling or suing. The Supreme Court has made it clear that they have to act jointly. Even 262 says ownership is joint.

            The Federal Circuit “holding” that they are tenants in common flies in the face of the Supreme Court holding.


              I understand perfectly. You are conflating joint ownership with joint tenancy. There are at least three types of joint ownership. Joint tenancy, tenants in common, and tenants in the entireties.

              Your failure to deal with the inheritance issue with joint tenants is becoming annoying. I suggest that you re-review your property text.


                DR, patents appear to be a hybrid type. But even so, the Supreme Court case law requires consent of all to sue and to license. Moreover, only the patentee might sell an interest. Who is the patentee? All the owners acting jointly.



          Re: your arguments:

          You sound like the Federal Circuit., Ignore holdings of the Supreme Court.
          The statutes to 61 and 262 were around at the time of the Supreme Court decisions I reference.

          Clearly, these cases provide that all owners must cooperate to both license and to enforce a patent.
          Personal exploitation and accounting to other pat dollars is permitted, but this is not inconsistent with requiring, cooperation for licensing others and to enforce the patent,
          Moreover, you seem to endorse a gross immorality.

          Your defense of the indefensible state of the Federal Circuit law is unacceptable from s justice point of view. You out and out endorce thievery.

      2. 2.2.2

        Ned:”Being able to take the benefit of the whole property to the exclusion of their co-owners is quite another.”

        There is no exclusion of the other co-owners. They retain the ability to practice as well as to license others. You’re implicitly assuming that the co-owners are entitled to licensing revenue from the patent, but oddly enough not actual revenue from sale of the patented invention. I’d like see an authority that justifies that assumption.

        Assume a licensing business. Assume a patent, two owners. An infringer infringes — damages are 1oo Million. The two owners sue. During trial, one owner unilaterally grants the infringer a license for $10 million.

        It is a non sequitur to say that the non settling owner is not damaged because the one owner took the whole benefit for himself unilaterally.

        This should not be possible. It is immoral beyond belief if not illegal.


          It’s hardly immoral. That is competition between licensors. We generally favor that result.

          As for it being illegal – until the Supreme Courts deigns to say otherwise, it is not. Precedent is not at all equivocal for this.


            There is nothing that so vexes patent law as the Federal Circuit’s idea that a wildcard inventor/owner can license/sell/refuse to join in enforcement of a patent. This makes a patent worthless.

            Get with the program.

  3. 1

    All this chaos in the courts caused by not tying up all inventors.

    We should consider clarifying the law of patent ownership in a way that this kind of fiasco cannot happen.

    For one thing, just like bringing suit requires all owners, all owners should have to sign any license or any conveyance of any interest in legal title.

    Does anyone oppose this, even in principle?

    1. 1.1

      How does the atrawman of “uncertain patent ownership become a part of the author’s topic?

      1. 1.1.1

        (Much like our earlier conversation Ned on the state-by-state impacts of marital rights on ownership, these types of ownership issues occur with ALL property – you just have to recognize and deal with that inconvenient fact)

Comments are closed.