March 25, 2023

Volume XIII, Number 84


March 24, 2023

Subscribe to Latest Legal News and Analysis

March 23, 2023

Subscribe to Latest Legal News and Analysis

Patent Underlying Walker Process Claim is Not Enough to Give Rise to Federal Circuit Jurisdiction

In Chandler v. Phoenix Services LLC, No. 2020-1848 (Fed. Cir. June 10, 2021), the Federal Circuit transferred the case to the United States Court of Appeals for the Fifth Circuit finding that it lacked jurisdiction.

Chandler brought a Walker Process claim based on Phoenix’s assertion of U.S. Patent No. 8,171,993, which was held unenforceable due to inequitable conduct.  On appeal, the Federal Circuit held that it lacked jurisdiction over the appeal because the action did not “arise under” an “Act of Congress relating to patents” as required by 28 U.S.C. § 1295(a)(1).  The Court explained that a case “relates” to patent law if (1) federal patent law gives rise to the cause of action or (2) the plaintiff’s right to relief did not necessarily depend on a substantial question of federal patent law.  Here, Chandler’s claim arose under the Sherman Act and resolution of the issue did not depend on resolution of a substantial question of patent law.  While not determinative of the issue, the Court found it significant that the patent at issue had already been ruled unenforceable.  

Priyesh Patel also contributed to this article.

© 2023 Finnegan, Henderson, Farabow, Garrett & Dunner, LLPNational Law Review, Volume XI, Number 167

About this Author

Caitlin O’Connell Intellectual Property Litigation Attorney Finnegan Law Firm

Caitlin O’Connell focuses her practice on patent litigation and client counseling in the areas of biotechnology and pharmaceuticals, with particular emphasis on Abbreviated New Drug Application (ANDA) cases.

Caitlin is involved in all phases of litigation, including pre-litigation analysis, claim construction, fact discovery, expert discovery, and trial. Caitlin’s litigation experience includes drafting pleadings, preparing fact and corporate witnesses for depositions, coordinating discovery, working with experts to develop infringement and validity positions, preparing expert...

202 408 4004
Elizabeth Ferrill Patent Attorney Finnegan Law Firm

Elizabeth Ferrill is an “undisputed expert on design patents” who is “always updated and enlightening others with her deep knowledge,” “very involved in the design bar,” and “gives her clients an outstanding service” as noted in Intellectual Asset Management Patent 1000. She focuses her practice on all aspects of design patents, including prosecution, counseling, post-grant, and litigation.

Elizabeth counsels clients who hold design patents as well as those accused of infringement. She has experience with design patents related to consumer and industrial products, medical...

202 408 4445