Federal Circuit Has Jurisdiction over Constitutional Claim Attacking Patent Statute | Practical Law

Federal Circuit Has Jurisdiction over Constitutional Claim Attacking Patent Statute | Practical Law

The US Court of Appeals for the Federal Circuit held in Madstad Engineering, Inc. v. USPTO that the Federal Circuit has jurisdiction to hear a claim attacking the constitutionality of an Act of Congress relating to patents.

Federal Circuit Has Jurisdiction over Constitutional Claim Attacking Patent Statute

Practical Law Legal Update 3-573-4306 (Approx. 3 pages)

Federal Circuit Has Jurisdiction over Constitutional Claim Attacking Patent Statute

by Practical Law Litigation
Published on 07 Jul 2014 • USA (National/Federal)
The US Court of Appeals for the Federal Circuit held in Madstad Engineering, Inc. v. USPTO that the Federal Circuit has jurisdiction to hear a claim attacking the constitutionality of an Act of Congress relating to patents.
On July 1, 2014, the US Court of Appeals for the Federal Circuit held in Madstad Engineering, Inc. v. USPTO that the Federal Circuit has jurisdiction to hear a claim attacking the constitutionality of an Act of Congress relating to patents (Nos. 2013-1511 and 2013-1512, (Fed. Cir. July 1, 2014)).
Mark Stadnyk and MadStad Engineering, Inc. (MadStad) filed a suit against the United States Patent and Trademark Office (USPTO), the office's director and the United States of America in the US District Court for the Middle District of Florida seeking a declaratory judgment that the "first-inventor-to-file" provision of the Leahy-Smith America Invents Act (AIA) is unconstitutional. The district court granted the USPTO's motion to dismiss for lack of standing to challenge the constitutionality of the AIA. MadStad appealed.
The Federal Circuit agreed with the district court that MadStad lacked standing. Before reaching the standing issue, however, the court analyzed whether the Federal Circuit, rather than a regional circuit Court of Appeals, has jurisdiction over the matter. As a court of limited jurisdiction, the Federal Circuit has jurisdiction over decisions "arising under" any Act of Congress relating to patents (28 U.S.C. § 1295(a)(1)). Because MadStad asserted a claim directly under the Constitution rather than under an Act of Congress itself (in this case, the AIA), the court was required to decide whether this claim was one arising under an Act of Congress within the meaning of 28 U.S.C. §§ 1295 and 1338.
Although the US Supreme Court has not yet determined the issue, the Federal Circuit held that the claims arise under an Act of Congress relating to patents and that it has jurisdiction over the matter because:
  • Resolution of the constitutional challenge in the case requires the court to interpret patent terms under the AIA and the Intellectual Property Clause of the US Constitution.
  • These interpretations are at the heart of the parties' dispute and substantial to the current state of patent law.
  • The Federal Circuit should interpret the AIA and assess its constitutional validity to ensure uniform application of the patent laws.