Xitronix Corp. v. KLA-Tencor Corp.

• Decision Date: 09 February 2018
• Docket Number: 2016-2746
• Citation: 882 F.3d 1075
• Parties: XITRONIX CORPORATION, Plaintiff-Appellant v. KLA-TENCOR CORPORATION, dba KLA-Tencor, Inc., a Delaware Corporation, Defendant-Appellee
• Court: U.S. Court of Appeals — Federal Circuit

882 F.3d 1075

XITRONIX CORPORATION, Plaintiff-Appellant

v.KLA-TENCOR CORPORATION, dba KLA-Tencor, Inc., a Delaware Corporation, Defendant-Appellee

2016-2746

United States Court of Appeals, Federal Circuit.

February 9, 2018

Michael S. Truesdale, Law Office of Michael S. Truesdale, PLLC, Austin, TX, argued for plaintiff-appellant.

Aaron Gabriel Fountain, DLA Piper US LLP, Austin, TX, argued for defendant-appellee. Also represented by Brian K. Erickson, John Guaragna.

Before Moore, Mayer, and Hughes, Circuit Judges.

ORDER

Moore, Circuit Judge.

The only asserted claim in the underlying case is a Walker Process monopolization claim based on alleged fraud on the United States Patent and Trademark Office ("PTO"). Both parties assert that the Federal Circuit has appellate jurisdiction over this case. We disagree. We therefore transfer the case to the United States Court of Appeals for the Fifth Circuit, which has appellate jurisdiction over cases from the District Court for the Western District of Texas.

BACKGROUND

This appeal arises from a single cause of action filed in the United States District Court for the Western District of Texas: a Walker Process monopolization claim under § 2 of the Sherman Act and §§ 4 and 6 of the Clayton Act based on the alleged fraudulent prosecution of a patent.¹ J.A. 29, 63. Xitronix stated the Federal Circuit had jurisdiction over this appeal pursuant to 28 U.S.C. § 1295(a)(1) and Nobelpharma AB v. Implant Innovations, Inc. , 141 F.3d 1059, 1067–68 (Fed. Cir. 1998), and KLA-Tencor ("KLA") did not dispute this assertion.

Before oral argument, we asked the parties to show cause why we should not transfer this case to the United States Court of Appeals for the Fifth Circuit for lack of jurisdiction. The parties filed supplemental briefs, asserting that the Federal Circuit has appellate jurisdiction over this case. The briefs did not address the impact of the Supreme Court's decision in Gunn v. Minton , 568 U.S. 251, 133 S.Ct. 1059, 185 L.Ed.2d 72 (2013). At oral argument, we ordered another round of supplemental briefing to address jurisdiction and, in particular, Gunn v. Minton.

DISCUSSION

This court has jurisdiction over the appeal of a final decision of a district court "in any civil action arising under ... any Act of Congress relating to patents or plant variety protection." 28 U.S.C. § 1295(a)(1). Interpreting nearly identical language in a previous version of our jurisdictional statute, the Supreme Court stated our jurisdiction extends "only to those cases in 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." Christianson v. Colt Indus. Operating Corp. , 486 U.S. 800, 809, 108 S.Ct. 2166, 100 L.Ed.2d 811 (1988) (emphasis added); see also Holmes Grp., Inc. v. Vornado Air Circulation Sys., Inc. , 535 U.S. 826, 834, 122 S.Ct. 1889, 153 L.Ed.2d 13 (2002) (By using "arising under" in our jurisdictional statute, "Congress referred to a well-established body of law that requires courts to consider whether a patent-law claim appears on the face of the plaintiff's well-pleaded complaint."), superseded in part by statute , Leahy-Smith America Invents Act § 19(b), Pub. L. No. 112-29, 125 Stat. 284 (2011) (amending 28 U.S.C. § 1295(a)(1) to add compulsory patent counterclaims).

In holding that our jurisdiction extends to cases in which patent law is a necessary element of one of the well-pleaded claims, the Supreme Court explained that the well-pleaded complaint rule "focuses on claims, not theories, ... and just because an element that is essential to a particular theory might be governed by federal patent law does not mean that the entire monopolization claim ‘arises under’ patent law." Christianson , 486 U.S. at 811, 108 S.Ct. 2166. In that case, the Court held that the Federal Circuit did not have jurisdiction over the asserted monopolization claim because it was based on several alleged theories, and only in one of those theories was "the patent-law issue [ ] even arguably essential." Id.

More recently, in Gunn , the Supreme Court held that a state law claim alleging legal malpractice in the handling of a patent case does not "aris[e] under" federal patent law for purposes of exclusive federal jurisdiction under 28 U.S.C. § 1338(a). 568 U.S. at 258, 133 S.Ct. 1059. Like the language of our jurisdictional statute, § 1338(a) states that federal district courts "shall have original jurisdiction of any civil action arising under any Act of Congress relating to patents, plant variety protection, copyrights and trademarks." 28 U.S.C. § 1338(a) ; compare § 1338(a), with § 1295(a) ("[T]he Federal Circuit shall have exclusive jurisdiction ... of an appeal from a final decision of a district court ... in any civil action arising under ... any Act of Congress relating to patents or plant variety protection."). The state malpractice claim necessarily required application of patent law, creating a patent law "case within a case," and the patent issue was actually disputed by the parties. Gunn , 568 U.S. at 259, 133 S.Ct. 1059. However, the Supreme Court held that "the federal issue in this case is not substantial" when analyzed with respect to the federal system as a whole. Id. at 260, 133 S.Ct. 1059. The resolution of the patent "case within a case" would have no effect on "the real-world result of the prior federal patent litigation," and allowing the state court to resolve the underlying patent issue would not undermine the uniform body of patent law because "federal courts are of course not bound by state court case-within-a-case patent rulings." Id. at 261–62, 133 S.Ct. 1059. Even if a novel question of patent law arose in such a situation, it would still "at some point be decided by a federal court in the context of an actual patent case, with review in the Federal Circuit," and even if the state court's adjudication was "preclusive under some circumstances, the result would be limited to the parties and patents that had been before the state court." Id. at 262–63, 133 S.Ct. 1059. The Supreme Court explained, "the possibility that a state court will incorrectly resolve a state claim is not, by itself, enough to trigger the federal courts' exclusive patent jurisdiction, even if the potential error finds its root in a misunderstanding of patent law." Id. at 263, 133 S.Ct. 1059.

The complaint in this case alleges that KLA "engaged in exclusionary conduct by fraudulently prosecuting to issuance the [']260 patent" and its conduct "was and is specifically intended to monopolize and destroy competition in the market." J.A. 63. It alleges KLA intentionally made false representations to the PTO on which the examiner relied during prosecution. On the face of the complaint, no allegation establishes "that federal patent law creates the cause of action." Christianson , 486 U.S. at 809, 108 S.Ct. 2166. The only question is whether the monopolization allegation "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." Id. Applying the well-pleaded complaint rule, in light of the Supreme Court's guidance and rationale in Gunn , we hold that it does not.

There is nothing unique to patent law about allegations of false statements. Indeed, in responding to the court's order to show cause, the parties both cited portions of the complaint that focus on fraud and misrepresentation, not patent law. See, e.g. , Xitronix Supp. Br. (Sept. 26, 2017) at 4–5 ("KLA-Tencor affirmatively (and repeatedly) misrepresented the patentability of the claims it sought, including making false representations about what was taught by the relevant prior art."); KLA Supp. Br. (Sept. 26, 2017) at 8–9 ("KLA's prosecution and procurement of the [']260 patent was undertaken in bad faith in order to monopolize the ... market."). We acknowledge that a determination of the alleged misrepresentations to the PTO will almost certainly require some application of patent law. For instance, the complaint alleges that KLA's attorney "failed to map" a one-to-one relationship between claim 1 of the '260 patent and another patent claim that had previously been held invalid. J.A. 42–43. An evaluation of that allegation may require analysis of the claims and specifications and may require application of patent claim construction principles. But consistency with the federal question jurisdiction statute requires more than mere resolution of a patent issue in a "case within a case." See Gunn , 568 U.S. at 257, 262–64, 133 S.Ct. 1059 ; Christianson , 486 U.S. at 808–09, 108 S.Ct. 2166. Something more is required to raise a substantial issue of patent law sufficient to invoke our jurisdiction under 28 U.S.C. § 1295(a)(1). See Gunn , 568 U.S. at 264, 133 S.Ct. 1059.

The underlying patent issue in this case, while important to the parties and necessary for resolution of the claims, does not present a substantial issue of patent law. See id. at 263–64, 133 S.Ct. 1059. There is no dispute over the validity of the claims—patent law is only relevant to determine if KLA intentionally made misrepresentations. Patent claims will not be invalidated or revived based on the result of this case. Because Federal Circuit law applies to substantive questions involving our exclusive jurisdiction, the fact that at least some Walker Process claims may be appealed to the regional circuits will not undermine our uniform body of patent law. See Golan v. Pingel Enter., Inc. , 310 F.3d 1360, 1368 (Fed. Cir. 2002) ("Federal Circuit law applies to causes of action within the exclusive jurisdiction of the Federal Circuit."); Mars Inc. v. Kabushiki-Kaisha Nippon Conlux , 24 F.3d 1368, 1371 (Fed. Cir. 1994) (Deference to regional circuit...