CAFC Reviews Of Interlocutory Decisions

1985Journal of the Patent and Trademark Office Society, 1985, pages 417-46

Although it is conventional wisdom that the CAFC, like the CCPA before it, only has jurisdiction to review "final judgments" or "final decisions," there are actually at least five techniques which can sometimes be used to obtain CAFC review of interlocutory decisions. However, the word "sometimes" must be emphasized, for experience with these five techniques suggests that the particular judges called upon to decide whether or not to grant interlocutory review is as outcome-determinative as the facts of the case.

The five techniques which can sometimes be used to obtain CAFC review of interlocutory decisions are (1) §1292(a)-type as-of-right review of certain specified types of interlocutory orders of the district courts; (2) §1292(b)-type discretionary review of other interlocutory decisions and orders of the district courts, the Claims Court, and the Court of International Trade; (3) extraordinary writ (usually mandamus) review of both the courts and the administrative agencies the final decisions of which are appealable to the CAFC; (4) review under the "collateral order doctrine"; and (5) review under "the Gillespie rule." While the latter two techniques appear to be closely related, to say the least, and while the standards for grant of interlocutory review under all of the latter three techniques tend to overlap, they are treated by the court as constituting separately identifiable techniques, and they will accordingly be discussed separately here.

1. §1292(a)-type Review As-of-Right of Certain Interlocutory Orders or Decrees of the District Courts

While the CAFC does not have jurisdiction under 28 USC 1292(a) per se, 28 USC 1292(c)[1] provides that the CAFC has exclusive jurisdiction over appeals from interlocutory orders or decrees of district courts described in 28 USC 1292(a)[2] "in any case over which the . . . [CAFC] would have jurisdiction of an appeal . . . [from a final decision]" and over appeals from judgments in civil actions for patent infringement "which would otherwise be appealable to the. . . [CAFC]" and which are "final except for an accounting." Thus, the net effect is simply that patent attorneys will have to get used to referring to §1292(c) appeals rather than §1292(a) appeals, but no substantive change has been effected. The CAFC has the same authority (and the same obligation) to review interlocutory orders of the district courts "granting, continuing, modifying, refusing or dissolving injunctions, or refusing to dissolve or modify injunctions" in patent cases as the regional circuit courts used to have, and the same authority to review decisions in patent cases which are final except for an accounting. Since this source of interlocutory review is "as of right" rather than discretionary, it is the most reliably available form of interlocutory review, but it is only available in a tiny fraction of the situations in which patent attorneys would like to obtain interlocutory review. Also, to date the CAFC has not had anything particularly interesting to say about its §1292(c) jurisdiction,[3] so I will spend no more time on it here.

2. §1292(b)-type Discretionary Review of Other Interlocutory Orders or Decrees of the District Courts, the Claims Court, and the Court of International Trade

By any measure, the CAFC's statutory §1292(b)-type discretionary review jurisdiction is potentially the most useful technique for reviewing interlocutory decisions. The trouble with it in the past has been that it has not been available in most situations in which patent and trademark attorneys need it. 28 USC 1292(d)[4] as originally promulgated gave the CAFC §1292(b)-type discretionary authority to review interlocutory decisions of the Court of International Trade (the former Customs Court) and the United States Claims Court (the former Trial Division of the Court of Claims), but the statute did not give the CAFC similar discretionary authority to review interlocutory decisions of the district courts in patent infringement cases,[5] much less to review interlocutory decisions of the Board of Patent Interferences and the Trademark Trial and Appeal Board. The CAFC so held with respect to review of interlocutory decisions by the district courts in Harrington Mfg. Co. v. Powell Mfg. Co.,[6] and the CCPA reached that result under the prior statute (which is substantively identical insofar as this issue is concerned) with respect to review of interlocutory decisions by the Trademark Trial and Appeal Board in R. G. Barry Corp. v. Mushroom Makers, Inc.[7]

On October 9, 1984, Congress finally passed legislation[8] which corrects the obvious oversight with respect to §1292(b) type discretionary review of interlocutory decisions of the district courts in patent infringement cases, and the President signed the bill into law on November 8, 1984.[9] Thus, the CAFC now has the same type of discretionary authority to review interlocutory decisions of the district courts in patent cases concerning controlling questions of law as the regional circuit courts long had.[10]

As for § 1292(b)-type discretionary review of interlocutory decisions of the Board of Patent Appeals and Interferences and the Trademark Trial and Appeal Board, in 1983 the Patent, Trademark, and Copyright Section of the American Bar Association adopted resolutions proposed by Sub-committee 1, Court of Appeals for the Federal Circuit, of Committee No. 401, Federal Practice and Procedure, which urged Congress to amend 28 USC 1291 to give the CAFC jurisdiction over 28 USC 1292(b)-type appeals by permission from the Board of Patent Interferences and the Trademark Trial and Appeal Board.[11] Also, the Board of Managers of the then American Patent Law Association (now the American Intellectual Property Law Association) approved a similar proposal by its Ad Hoc Committee on the Court of Appeals for the Federal Circuit while legislation to create that court was pending,[12] and, of course, the Trademark Trial and Appeal Board strongly signaled its support for such legislation in the portions of its opinion quoted in R. G. Barry Corp. v. Mushroom Makers, Inc.[13]Nevertheless, I am aware of no particular ongoing activity in support of the legislation which would be necessary to give the CAFC this type of jurisdiction. Accordingly, for present purposes it must be assumed that the court is likely to lack such jurisdiction for the foreseeable future. Thus, the practitioner seeking interlocutory review of decisions of the Board of Patent Interferences and the Trademark Trial and Appeal Board must turn to the last three and most chancy of the five techniques noted at the outset.

3. Review by Extraordinary Writ

The CAFC has inherited the CCPA's authority to issue extraordinary writs to the PTO and the ITC in appropriate cases,[14] and it was additionally given at least some authority to issue extraordinary writs to the district courts in cases where it has prospective appellate jurisdiction over the district court's not-yet-entered final judgment. Regrettably, however, the scope of the court's authority (or, at least, its willingness to exercise its authority) is very unclear on both sides of its intellectual property jurisdiction.

As will be apparent from the opinions discussed below, for a time there was a tension in the CAFC's opinions in extraordinary writ cases (traceable to a similar tension in the CCPA's opinions in extraordinary writ cases) between two groups of judges. One group of judges, prominently including Chief Judge Markey, appeared to believe that extraordinary writs were available only to preserve the court's prospective appellate jurisdiction. This view, embodied in Makari, CPC v. Nosco, and Snap-On Tools, suggested that extraordinary writs were not available where the action complained of would be reviewable "at final hearing". The other group of judges, prominently including Circuit Judges Friedman and Rich, appeared to believe that the CAFC can exercise what Prof. Moore calls the "supervisory mandamus" power of the other circuit courts of appeal.[15] This view is represented by the Mississippi Chemical opinion.

Fortunately, the developing schism in the CAFC appears to have been healed. The first step in that direction was Circuit Judge Bennett's opinion in Precision Screen,[16]but Chief Judge Markey finally accepted the Mississippi Chemical view in In re International Medical Prosthetics Research Assn. and Mark Industries. Although the court continues to carefully eschew use of the phrase "supervisory mandamus,"[17] it seems to have accepted the concept.

A. In re Makari, 708 F.2nd 709, 218 USPQ 193 (Fed. Cir. 1983) (per curiam, panel consisting of Chief Judge Markey and Circuit Judges Miller and Smith).

The first extraordinary writ case to reach the CAFC was In re Makari. Makari had been denied a filing date for a patent application on the ground that his original oath was defective. He thereupon executed a new oath, but by the time he resubmitted his application with the correct oath,[18] the first anniversary of the publication of an article authored by Makari had passed. The PTO then rejected all of Makari's claims under 35 USC 103 as unpatentable over that article.

Makari petitioned the Commissioner to change the filing date of his original application (the '517 application, which was the application involved on the petition for writ of mandamus, was his eighth continuation application), but the petition was denied. Makari thereupon petitioned the CAFC for a writ of mandamus directing the Commissioner to change the filing date. However, the petition was denied on the following basis:

Here, issuance of the requested writ is not necessary or appropriate to aid or preserve our prospective appellate jurisdiction over an appeal from a decision of the board on the '517 application. All of the claims of that application stand rejected under 35 USC §103. If the board affirms the rejection in whole or in part, Makari may appeal that decision to this court under 35 USC §141.[19]

That is, the board may review the question of whether Makari's original application was entitled to the date on which it was first received by the (then) Patent Office with the allegedly defective oath.[20] If the board holds that the application was not entitled to that date and thereupon affirms the rejection, Makari will then have an appealable decision of the board which he can take to the CAFC in the normal fashion. Thus, mandamus was not appropriate.[21]

While the result in Makari seems unexceptionable at first blush, the emphasis on "preservation of the court's prospective appellate jurisdiction" should be contrasted with the methodology employed by a different panel of the court in Mississippi Chemical, infra.

B. Baker Perkins, Inc. v. Werner & Pfleiderer Corp., 710 F.2d 1561, 218 USPQ 577 (Fed. Cir. 1983) (opinion delivered by Circuit Judge Baldwin for a panel also consisting of Circuit Judges Nichols and Kashiwa).

This opinion disposed of both an interlocutory appeal from a district court[22] and a petition for a writ of mandamus directed to that district court. The writ of mandamus requested by Baker Perkins was to compel the district court to vacate an order (1) directing Baker Perkins to petition the PTO to revive an abandoned application to reissue an expired patent and to "prosecute the reissue application to a final determination by the PTO"[23] and (2) directing the PTO to complete its examination of the abandoned application (this despite the fact that the PTO was not a party to the district court action). Baker Perkins had apparently argued both to the district court and to the CAFC that the PTO has no authority to reissue an expired patent[24] and thus no authority to examine an application to reissue an expired patent, and the PTO also asserted in a memorandum which it filed in the CAFC at the request of the court that it had "no authority to comply with the . . . [district court's] order."[25]

A panel of the CAFC held that, "[s]ince the district court's jurisdiction in the declaratory judgment action between Baker Perkins and Werner & Pfleiderer is based on 28 USC 1338, this court has jurisdiction to hear their petition for a Writ of Mandamus."[26] However, the court denied the petition for a writ of mandamus on the ground that "issuance of a writ would be premature in this case"[27] because the PTO had not yet formally denied the petition which the order required Baker Perkins to file. According to Judge Baldwin, "the possibility [.] of such a denial by the PTO abrogates [sic] the need for a Writ of Mandamus at this time."[28]

Since the question raised by the petition for the writ was whether the district court had the authority to compel Baker Perkins to file the petition to revive the abandoned reissue application, it is difficult to perceive why the possibility that the PTO would deny such a petition was relevant. Moreover, as in Makari, the court's denial of the writ put the petitioner to a great deal of needless trouble and expense if, in fact, the lower tribunal's decision was wrong.

C. Mississippi Chemical Corp. v. Swift Agricultural Chemicals Corp., 717 F.2d 1374, 219 USPQ 577 (Fed. Cir. 1983) (opinion delivered by Circuit Judge Friedman for a panel also consisting of Circuit Judges Rich and Davis)[29]

This opinion seems destined to become a classic in two areas: Blonder-Tongue estoppel and CAFC extraordinary writ practice. However. only the latter aspect of the opinion is discussed in this paper.

This opinion was on a petition for a writ of mandamus directing a United States district judge to grant a motion for partial summary judgment of patent invalidity in a patent infringement suit. In the portion of the opinion devoted to the Blonder-Tongue issue, the CAFC held that the district judge had erred in failing to grant the petitioner's motion for a partial summary judgment. However, the court separately addressed the issue of whether it should issue a writ of mandamus to correct that error.

Preliminarily, the court held that "[t]here is no question that we have authority to issue the writ under the All Writs Act, 28 U.S.C. §165l(a) (1976) as 'necessary or appropriate in aid of' our jurisdiction."[30] This unexceptionable holding was based on the reasoning that, since the CAFC would have had jurisdiction over an appeal from the final decision in the infringement action under 28 USC 1338, it had the authority to issue an extraordinary writ to the lower court in that case prior to the entry of the final judgment.

Next, the court held that, "[a]lthough '[t]he traditional use of . . . [a writ of mandamus by an appellate court] has been to confine an inferior court to a lawful exercise of its prescribed jurisdiction or to compel it to exercise its authority when it is its duty to do so,'. . . its use is not that restricted."[31] In particular, "in exceptional circumstances" an appellate court can use a writ of mandamus" to correct a 'clear abuse of discretion or "usurpation of' judicial power" by the trial court."[32]

Finally, turning to the specific facts before it, the CAFC held that the district court's misapplication of Blonder-Tongue constituted "an abuse of discretion which it . . . [was] appropriate to correct by mandamus . . . [because] [t]he effect of the district judge's action . . . [was] to require Mississippi Chemical to litigate the validity of the Kearns patent despite a prior determination of invalidity in a case in which Swift had a full and fair opportunity to litigate that issue."[33] However, the CAFC also gave great weight to the fact that the issue presented to it by the petition for mandamus would have become moot if the court had required Mississippi Chemical to wait for an appeal from the lower court's final decision, since it was "[t]he right of an alleged infringer . . . not to relitigate the validity of a patent that has been invalidated in a prior case in which the patentee had a full and fair opportunity to litigate validity"[34] which Mississippi Chemical was seeking to assert. Nevertheless, this opinion may prove invaluable to petitioners for extraordinary writs directed to the PTO, who are often met with the argument that the application for the writ is premature because, if only the petitioner will litigate the matter to the bitter end before the PTO, it may win anyway, rendering consideration of the issue sought to be raised by the writ unnecessary.[35]

In closing, the court again stressed the "exceptional circumstances" of the case before it and disclaimed any intention of interfering unduly with the affairs of the district courts. Somewhat inconsistently, it asserted that:

We take this action [i.e., issue the writ of mandamus] pursuant to our authority under 28 U.S.C. §1651(a). Unlike the other circuit courts of appeals, we have no general supervisory authority over district courts.[36]


However, as this author has argued elsewhere,[37] it would seem that the CAFC does have "general supervisory authority" over lower tribunals in cases where it has appellate authority over their final decisions. Thus, while the CAFC presumably will not have as many opportunities to exercise that authority over any particular district court as will the regional circuit court which has appellate authority over most of that district court's final decisions, there is no reason why the CAFC does not have at least the same relationship to (i.e., the same "general supervisory authority" over) all of the district courts in matters subject to the CAFC's review after final decision as the regional circuit courts have to the district courts within their circuits in matters subject to their review after final decision. It is to be hoped that, after the CAFC becomes somewhat more comfortable in the exercise of its powers over the district courts, it will so hold.

D. C.P.C. Partnership v. Nosco Plastics, Inc., 719 F.2d 400, ____ USPQ ____(Fed. Cir. 1983) (per curiam, panel consisting of Chief Judge Markey and Circuit Judges Smith and Nies)

In this opinion, issued three days after the Mississippi Chemical opinion but by an entirely different panel of the CAFC, a panel of the CAFC once again asserted that:

This circuit has no general authority to issue a writ of mandamus directed to a district court judge sitting in another circuit. See General Electric Co. v. Byrne, 611 F.2d 670 (7th Cir. 1979). The Federal Court Improvements Act, Pub. Law 97-164, provided jurisdiction in this court over appeals from district court judgments in certain cases. It provided no supervisory authority over any district court, such as might justify a writ of mandamus under certain circumstances. See In re Virginia Elec. & Power Co., 539 F.2d 357, 365 (4th Cir. 1976) and cases there cited.[38]

With respect, it is submitted that the General Electric opinion is not on point. It holds that one of the regional circuit courts does not have authority to issue a writ of mandamus directed to a district court judge sitting in another regional circuit. But the CAFC is not a regional circuit court, and all district court judges sit within the CAFC's circuit when deciding cases arising under the patent laws. In the General Electric case, the Seventh Circuit was concerned about a potential direct conflict with another regional circuit court — namely, the one in which the district court judge in question was sitting. But, in this case, there was no other circuit court with which the CAFC's assertion of supervisory authority could have brought it into conflict, since there was no other circuit court having jurisdiction to review the issue in question, whether by mandamus or by appeal after final judgment.[39]

After ruling that it had "no general authority to issue a writ of mandamus" to the district court in question, the CAFC continued as follows:

Nor does the All Writs Act, 28 U.S.C. §1651, provide a basis for issuance of a writ of mandamus here.[40] That statute authorizes the writ "in aid of [our] jurisdiction." Our jurisdiction to hear the appeal on the merits in this case is not affected by the present denial of a motion to disqualify [the respondent's counsel] based on conjecture. Whether a writ of mandamus may issue to a district court from this court when necessary to preserve the jurisdiction of this court is a question that must await its day.[41]

To the author, the limitation implicit in the foregoing paragraph is totally inconsistent with Mississippi Chemical, which was decided three days earlier and which issued a writ of mandamus to a district court judge in a case where issuance of the writ was plainly not necessary to preserve the appellate jurisdiction of the CAFC. Instead, the writ was issued simply because the district court's decision was flagrantly wrong and to have required the petitioner to wait until appeal from a final judgment to correct the flagrant error would have worked a substantial hardship on the petitioner.

E. In re Snap-on Tools Corp., 720 F.2d 654, 220 USPQ 8 (Fed. Cir. 1983) (opinion delivered by Chief Judge Markey for a panel also consisting of Circuit Judges Friedman and Rich). order revised at 735 F.2d 476,____USPQ____(Fed. Cir. 1984).

I fear that this case may be cited for the proposition that even the best judges can go astray. The opinion by Chief Judge Markey for a panel also consisting of Circuit Judges Friedman and Rich "is totally, completely and absolutely dead wrong."[42]

The background of the opinion is straightforward, if somewhat unusual. A patentee named Edwards sued Snap-On Tools Corp. for what amounted to patent infringement in the Circuit Court of Mobile County, Alabama(!). Instead of moving to dismiss the action on the ground that, under 28 USC 1338(a), the United States district courts have exclusive jurisdiction over patent infringement suits, the defendant removed the case to the U.S. District Court for the Southern District of Alabama (where the case probably should have been brought in the first place). Edwards then moved to remand the case to the state court, and the U.S. district court, without comment or opinion, granted the motion. Snap-On then petitioned the CAFC for a writ of mandamus,[43] and, amazingly, the petition was granted. According to Chief Judge Markey:

When this action was removed from the state court, because it is based on a claim over which the federal courts have exclusive jurisdiction, that removal was proper. 1A J. MOORE, B. RINGLE, and J. WICKER, MOORE'S FEDERAL PRACTICE §0.157 [3.2] (2d ed. 1983). See, e.g., Cole v. U.S., 657 F.2d 107, 108-109 (7th Cir. 1981), cert. denied, 454 U. S. 1083 (1981). If after removal, it appears that the federal court could not act. the proper remedy would be to dismiss the action, not a remand to a state court that has no jurisdiction over the action. Id. Here, however, the federal court clearly has original jurisdiction under 28 U.S.C. §1338(a) and the action was correctly removed to the district court under 28 U.S.C. §1441(b)[44]

With great respect, it is submitted that neither Moore nor Cole supports the extraordinary step taken by the CAFC. Quite the contrary. As is correctly stated in Cole:

It is frequently, if not axiomatically, said that subject matter jurisdiction on removal is derivative. If the state court where the suit originated was without jurisdiction, the federal court acquires none upon removal. Lambert Run Coal Co. v. Baltimore & Ohio RR Co., 258 U.S. 377, 42, S.Ct. 349, 66 L.Ed. 671 (1922).[45]


What the CAFC appears to have done is to have confused the situation present in Cole (where the state and Federal courts had concurrent jurisdiction) with the situation before it (where the Federal courts have exclusive jurisdiction). In the latter situation, the action brought in the state court is a nullity, since the state court has no jurisdiction, and the Federal court does not acquire jurisdiction upon removal even if it would have had jurisdiction if the suit had been brought in the Federal court to begin with. Thus, Snap-On's "proper remedy" was not to prolong the charade by seeking to force removal of the improperly brought state court action to the Federal court. Instead, it should have (1) moved in the state court to dismiss the state court action for want of jurisdiction and either (2)(a) waited for Edwards to sue it for patent infringement in a Federal court or (2)(b) sued Edwards in a Federal court for a declaratory judgment of patent invalidity and/or non infringement.

What the district court will do when faced with the CAFC's opinion is an interesting question. Obviously, what it should have done was to have accompanied its order remanding the case to the state court with an opinion explaining why it was doing so.

On the extraordinary writ question itself, Chief Judge Markey's opinion is extraordinarily brief. All it says is:

Mandamus is required here to aid the jurisdiction of this court. 28 U.S.C. §1651. To rule otherwise would frustrate the appellate jurisdiction of this court and its intended purpose (to provide uniform interpretation of the patent laws and prevent forum shopping) in cases properly brought to the district courts under 28 U.S.C. §1338(a). C.R. Bard, Inc. v. Schwartz, 716 F.2d 874, App. No. 83-682, 219 USPQ 197 (Fed. Cir. August 30, 1983).[46]


Nevertheless, Judge Markey's opinion clearly appears to be from the school holding that extraordinary writs are available to insure that a lower tribunal's erroneous action will not prevent a case otherwise within the appellate court's prospective appellate jurisdiction from ever getting there on appeal after the conclusion of the proceedings below.[47] The trouble with the application of that rule in this case, however, was that an action for patent infringement brought originally in a state court is not a case within the CAFC's prospective appellate jurisdiction.

G. In re Precision Screen Machines, Inc-., 729 F.2d 1428, 221 USPQ 1034 (Fed. Cir. 1984) (per curiam, panel consisting of Circuit Judges Bennett, Miller, and Smith)

This was a patent infringement suit brought by an exclusive field of use licensee. The district court had entered an order refusing to dismiss the action for failure of the plaintiff to join a FRCP 19 necessary or indispensable party — namely, the owner of the patent in suit. Additionally, the district court refused to certify the matter for interlocutory appeal pursuant to 28 USC 1292(b).[48] The defendant then petitioned for a writ of mandamus ordering the district court to vacate its order denying the motion to dismiss or, in the alternative, to require the patent owner to be joined as an involuntary plaintiff.

The panel of the CAFC apparently sympathized with the petitioner,[49] but it:

Nevertheless . . . decline[d] to issue the writ sought, finding in the circumstances of this case no clear demonstration of any abuse of discretion by the district court, as in Mississippi Chemical Corp. v. Swift Agricultural Chemicals Corp., 717 F.2d 1374, 219 USPQ 577 (Fed. Cir. 1983), or any potential in the actions of that court complained of by petitioners to frustrate the appellate jurisdiction of this court, as was the case in In re Snap-On Tools Corp., 720 F.2d 654 (Fed. Cir. 1983).[50]

While this opinion also resulted in the denial of the requested writ, the attempted synthesis of the Mississippi Chemical approach (i.e., that the writ is available to peremptorily correct glaring errors below before they cost the parties and the lower tribunal any more time and trouble) with the Makari/C.P.C. Partnership approach (i.e., that the writ is available to insure that the lower tribunal's action cannot prevent a case otherwise within the CAFC's prospective appellate jurisdiction from ever getting there on appeal at all) was heartening. As is demonstrated by the cases discussed here, both possibilities occur from time to time, and, as indicated in the opinion in Precision Screen, the wirt ought to be available to deal with either type of situation.

H. In re International Medical Prosthetics Research Assn. Inc., 739 F.2d 618, ___USPQ ____ (Fed. Cir. 1984) (opinion delivered by Chief Judge Markey for a panel also consisting of Circuit Judge Friedman and Rich)

Despite a ritual disclaimer, this opinion represents the first step in Chief Judge Markey's grudging acceptance of "supervisory mandamus" jurisdiction. That is, while the opinion cited C.P.C. Partnership, supra, for the proposition that "this court is devoid of . . . [supervisory] authority [over the district court],"[51] it denied a request for a supervisory writ on the merits rather than on the basis that the court had no authority to issue the writ.

While the opinion does not make it clear what relief was being sought by the requested writ, the decision complained of was a Federal district court's decision disqualifying one of the two firms representing the petitioner in the district court. In the course of denying the writ, Chief Judge Markey reviewed his own opinions in C.P.C. Partnership and In re Snap-On Tools Corp., Judge Friedman's opinion in Mississippi Chemical, and Judge Bennett's opinion In re Precision Screen Machines, Inc., Significantly, while he characterized C.P.C. Partnership and In re Snap On Tools Corp. as involving "no question of preservation of this court's jurisdiction"[52] and "potential frustration of the appellate jurisdiction of this court,"[53] respectively, he stated that, in In re Precision Screen Machines, Inc., "this court declined to issue a writ of mandamus when the circumstances of the case gave no clear demonstration of any abuse of discretion by the district court, unlike the situation in Mississippi Chemical Corp. v. Swift Agricultural Chemicals Corp."[54] Thus, although the court declined the writ on the stated ground that, "In the present case, there is no implication that this court's jurisdiction over the appeal from the disqualification decision or over the final judgment on the merits would be frustrated absent a grant of the petition,"[55] there is a strong implication that the court also considered whether or not to issue the writ on the alternative ground that the decision below was simply so plainly wrong that interlocutory correction was appropriate.

Perhaps of even more importance to the court's grudging acceptance of its supervisory authority over the district courts was its assertion that, in a proper case, it would "intervene in a district court's management of its calendar or scheduling of events in a matter before that court."[56] Although nine days earlier in Peterson Mfg. Co. v. Central Purchasing, Inc., 740 F.2d 1541, 222 USPQ 562 (Fed. Cir. 1984) (opinion delivered by Circuit Judge Nies for a panel also consisting of Chief Judge Markey and Circuit Judge Bennett), a different panel of the court had stated that the Federal Circuit does not "have the authority . . . to order assignment of this case to a different judge" on remand,[57] in In re International Medical Prosthetics Research Assn. the court stated that it would issue such orders where "some overwhelming legal requirement or showing of manifest injustice" dictated the issuance of such order. Thus, while it is clear that the court will actually issue such orders only rarely (as is, of course, perfectly proper), it is equally clear that at least some of the judges of the court (notably including the chief judge of the court) now accept the fact that the court does have "authority" (i.e., the statutory power) to issue such orders.

I. In re Oximetrix, Inc.____ F.2d ____, 223 USPQ 1068 (Fed. Cir. 1984) (opinion delivered bv Chief Judge Markey for a panel also consisting of Circuit Judges Nies and Newman)

This opinion was on a petition for a writ of mandamus ordering a Federal district court to vacate its order remanding an action to a state court. In its order remanding the action to the state court, the Federal district court had specifically ruled that, pursuant to 28 USC 1447(d)[58] and Gravitt v. Southwestern Bell Telephone Co., 430 U.S. 723 (1977), the remand was "not reviewable by any means, whether by appeal or mandamus."[59] Nevertheless, Oximetrix ("Oxco") petitioned the CAFC for the writ of mandamus, in effect seeking review of the district court's order.

At the CAFC, the court's discussion of the reviewability issue was but a short prelude to its award of costs and attorney fees on appeal.[60] The fulcrum of the court's disposition of the reviewability issue was as follows:

Non-reviewability of remands under §1447(c) has been assailed, but it is the established law in the statute and in the decisions of the Supreme Court upholding the statute.[61]

It is interesting, however, in view of the court's brief holding that the district court's action in remanding the case was non-reviewable, that it spent several pages of what accordingly must be considered obiter dictum reviewing the district court's action and asserting (under the circumstances, one cannot say "holding") that the district court's action was correct.

J. In re Mark Industries,____F.2d ____, ____USPQ ____ (Fed. Cir. 1984) (opinion delivered by Chief Judge Markey for a panel also consisting of Circuit Judges Bennett and Smith)

This opinion may be of considerable importance in CAFC extraordinary writ practice because it appears to signal Chief Judge Markey's acceptance of an outrageously wrong interlocutory decision below as justifying relief by way of an extraordinary writ despite the fact that the outrageously wrong interlocutory decision in no way threatens the court's ultimate appellate authority. Thus, while this opinion does not extend In re Precision Screen Machines, Inc., supra, it does give welcome evidence that what appeared to be a schism in the court has been healed. According to this opinion:

Use of the writ [of mandamus] is not restricted to instances in which failure to issue it would preclude an appeal to the issuing court. The writ may be employed in exceptional circumstances to correct a "clear abuse of discretion or 'usurpation of judicial power'" by the trial court.[62]

Moreover, this opinion also conclusively rejected the suggestion that relief may alternately be available from the regional circuit court in whose region the district court is located:

Because the jurisdiction of the district court was based on 28 USC §1338, this court has exclusive jurisdiction of any appeal from the final decision in the case. 28 USC §1295(a)(1). Thus this court, and only this court, has authority to issue a writ appropriately in aid of jurisdiction in this case. If the writ is available at all under the circumstances here, it is available only from this court.[63]


Whether this aspect of the opinion will, in time, lead to the realization that the CAFC does have a certain amount of supervisory authority over the district courts in cases appealable to the CAFC from those courts,[64] only time will tell.

Of course, it seems probable that, in light of its recently created § 1292(b) jurisdiction, the CAFC will exercise whatever "supervisory mandamus" power it has over the district courts only rarely. However, since the court does not have §1292(b) jurisdiction over interlocutory appeals from the International Trade Commission, the Trademark Trial and Appeal Board, or the Board of Patent Appeals and Interferences, the cases discussed above (particularly Mississippi Chemical) continue to be very relevant to that side of the court's jurisdiction.

4.& 5. Interlocutory Appeals Under the Collateral Order Doctrine and the Gillespie Rule

For many years it was black-letter law in the CCPA that the word "decision" in 15 USC 1071(a)(1)[65] and 35 USC 141[66] meant "final decision" — although of course the statutes did not say "final decision." In fact, the CCPA's restrictive interpretation of the word "decision" in its jurisdictional statutes dates only from Master, Warden, etc. v. Sheffield Steel Corp.,[67]in which that interpretation was adopted over a powerful dissent by Judge O'Connell. Nevertheless, the CCPA adhered to it for many years.[68]

The beginning of the end for the harsh Master, Warden rule came in Judge Rich's seminal opinion in Knickerbocker Toy Co. v. Faultless Starch Co.[69]which granted review of an interlocutory decision of the Trademark Trial and Appeal Board under "the Gillespie Rule," discussed infra in connection with Judge Rich's opinion in Tenneco Resins, Inc. v. Reeves Bros., Inc.[70]For a number of years thereafter, this important aspect of CCPA jurisprudence was in a state of considerable disarray.[71] To put it charitably, whether or not the CCPA would review an interlocutory decision of one of the PTO boards in any given case was not easily predictable.

Shortly after creation of the CAFC, that court purported to adopt the restrictive Masters, Warden rule. In Wagner Shokai, Inc. v. Kabushiki Kaisha Wako,[72]a panel of the court[73] sua sponte dismissed the appellant's appeal from a decision of the Trademark Trial and Appeal Board denying the appellant's motion to dismiss the appellee's petition for cancellation.[74] That dismissal was consistent with some CCPA precedent,[75] but the court's brief opinion does not account for the inconsistent line of authority stemming from Judge Rich's opinion in Knickerbocker Toy. On the other hand, Wagner did not overrule Knickerbocker, and subsequent developments indicate that both lines of authority are still alive and well in the court.

A. Baker Perkins, Inc., v. Werner & Pfleiderer Corp., 710 F.2d 1561, 218 USPQ 577 (Fed. Cir. 1983) (opinion delivered by Circuit Judge Baldwin for a panel also consisting of Circuit Judges Nichols and Kashiwa)

This opinion involved the CAFC's first attempt to deal with the "collateral order" doctrine established by Cohn v. Beneficial Industrial Loan Corp.[76] That doctrine was explained by Judge Baldwin as follows:

The collateral order doctrine permits an interlocutory order to be deemed a final order for the purpose of appellate review where "the order is based on a claim separate from, and collateral to, the rights asserted in the underlying cause of action." Montgomery Ward & Co., Inc. v. Zenith Radio Corp., 673 F.2d 1254, 1259 n.8 (CCPA 1982). To appeal under the collateral order doctrine, an appellant must identify a right that will be lost if the decision is not immediately reversed. In Montgomery Ward, for instance, a discovery order was deemed appealable where confidential information had been held to be subject to discovery, and the appellant could not resist or force the custodian of the information to resist compliance with the discovery order. The threatened loss of the right to maintain confidential documents secret, satisfied the requirement of the collateral order doctrine.[77]

In Baker Perkins the order in question had been issued by a district court in connection with a pending infringement litigation. The order directed Baker Perkins to petition the PTO to revive an abandoned application to reissue an expired patent and to "prosecute the reissue application to a final determination by the PTO,"[78] and it also purported to direct the PTO to complete its examination of the abandoned application, although the PTO was not a party to the district court action. Baker Perkins had apparently argued both to the district court and to the CAFC that the PTO has no authority to reissue an expired patent,[79] and the PTO also asserted in a memorandum which it filed in the CAFC at the request of the court that it had "no authority to comply with the . . . [district court's] order."[80]

Regrettably, the CAFC refused to get involved:

In the present case, Baker Perkins has not identified a particular right which will be lost, absent an appeal. The order appealed from simply compels Baker Perkins to petition the PTO and to participate in proceedings conducted in response to the petition. There is no certainty that the PTO will conduct any proceeding at all in response to a petition filed by Baker Perkins. It would therefore be premature to conclude that Baker Perkins will be required to participate in an improper proceeding if Baker Perkins complies with the portion of the district court's order requiring the filing of a petition. Because of this uncertainty, Baker Perkins has not clearly shown a right that will be lost or impaired absent an appeal at this time.[81]


Thus, once the PTO has officially refused to revive the abandoned application (and we all know how long that may take, unless the PTO expedites the matter because of the existence of the pending litigation), the parties will presumably be back before the CAFC or the district court for another expensive round of litigation — a round which would have been avoided if the CAFC had said either that there is no need to exhaust useless administrative "remedies" or that the right not to be required to file a useless petition (accompanied by a non-refundable $50 petition fee)[82] was a right which would be lost if the district court's order was not immediately reviewed.

B. Tenneco Resins, Inc. v. Reeves Bros., Inc., 736 F.2d. 1508, 222 USPQ 276 (Fed. Cir. 1984) (opinion by Circuit Judge Rich)

This opinion contrasts sharply with the previous opinion, and in fact it raises questions concerning the continuing validity of some of the CAFC's own precedent[83] and precedent from the CCPA.

Initially, however, it should be pointed out that Tenneco is not really an opinion "of the court." Despite the fact that USPQ lists the opinion as "Per curiam," it was actually an opinion by Circuit Judge Rich by himself (i.e., not for a panel of the court) pursuant to the authority granted by FRAP 27(c), "Power of a Single Judge to Entertain Motions."[84] Thus, the opinion is entirely consistent with Judge Rich's predilection to accept jurisdiction in such cases[85] and not inconsistent with some of his colleagues' penchant for refusing to accept jurisdiction in such cases.[86] Unfortunately, the most realistic assessment which comes out of an attempted synthesis of the CCPA and CAFC opinions on this subject[87] is that the existence of appellate jurisdiction over interlocutory appeals (or, at least, the court's willingness to exercise such jurisdiction) appears to depend on who delivers the opinion.

The facts may be easily stated. Tenneco sued Reeves for infringement of one patent, and Reeves counterclaimed for a declaration that Tenneco's patent was invalid, for infringement of one of its own patents, and for the declaration of an in-court interference proceeding between that patent and another patent owned by Tenneco. Tenneco apparently did not immediately respond to Reeves' counterclaims by alleging invalidity and unenforceability of Reeves' patent, but it later moved for leave to amend its answer to do so. The district court denied that motion, Tenneco appealed the denial, and Reeves moved to dismiss the appeal on the ground that the denial of the motion to amend the pleading was not "a final decision" within the meaning of 28 USC 1295(a)(1).[88]

At the time of this appeal, there were basically three techniques for getting around the CAFC's lack of 1292(b)-type discretionary interlocutory review authority: the All Writs Act, 28 USC 1651(a); the collateral order doctrine; and "the Gillespie rule." This appeal involved the second two of the three techniques, which Judge Rich referred to as "two related but independent bases for this court's jurisdiction, which are recognized expansions of [sic; exceptions to?] the final judgment rule."[89] Tenneco lost on the first of those techniques (i.e., the collateral order doctrine), but it won the second (the Gillespie rule).

According to Judge Rich, in order to appeal an interlocutory decision of a trial court under the collateral order doctrine, (1) that decision "must conclusively determine the disputed question"; (2) it must "resolve an important issue completely separate from the merits of the action"; and (3) it must "be effectively unreviewable on appeal from a final judgment."[90] Reeves argued that there was a fourth condition, that the interlocutory decision must present "a serious and unsettled question,"[91] but Judge Rich held that the fourth condition was discretionary, not mandatory,[92] and that it did not have to be addressed because Tenneco failed to satisfy the third requirement in any event. That is, Judge Rich ruled that Tenneco could not appeal under the collateral order doctrine because it would have been able to raise the same issue (i.e., the propriety of the district court's order denying it leave to amend its answer) on appeal after the district court had decided the remaining issues.

However, Tenneco was more successful under the so-called Gillespie rule,[93] which Judge Rich had relied on in his seminal opinion for the CCPA in Knickerbocker Toy Co. v. Faultless Starch Co., 467 F.2d 501, 175 USPQ 417 (CCPA 1972). According to Judge Rich, that rule authorizes appellate review of interlocutory decisions when the effect of the interlocutory decision is "fundamental to the further conduct of the case."[94] Elaborating upon that theme (or, perhaps, stating a different theme), Judge Rich held that Gillespie and Knickerbocker permit appellate review of interlocutory decisions where (1) the decisions complained of "raise issues separate and distinct from those raised by "the remaining, undecided portion of the case below and (2) "the goal of judicial economy [will] be served."[95]

In the case before him, Judge Rich held that the issues of the validity and enforceability of Reeves' patent were "sufficiently 'separate and distinct' from the issue of its infringement and interference with Tenneco's . . . [second patent in suit]"[96] for purposes of the first prong of the Gillespie rule, but sufficiently related to those other issues so that much of the same evidence would have to be put on, thereby satisfying the second prong of the Gillespie rule.

Although Judge Rich gave lip service to the first prong of the Gillespie rule, it is the author's opinion that in fact, insofar as Judge Rich is concerned, the second prong is outcome determinative. Thus, it is the author's opinion that the following paragraph states the real basis for the result in the case:

An important question before us is whether judicial economy would be served by allowing this appeal. While the affirmative defenses of validity and unenforceability against an asserted patent are technically separate and distinct [from the question of infringement], realistically they involve related if not identical evidence. In the words of Knickerbocker Toy, they are "hopelessly intermingled" with the remaining issues. The district court's denial presents the substantial possibility that an additional trial, requiring the parties to resubmit evidence previously presented, argued, and weighed by the district court, would be needed.[97]

While the foregoing discussion is couched in terms of "judicial economy," it is obviously also highly relevant to litigation economy for the parties, a factor which is clearly highly persuasive to Judge Rich.[98] Moreover, by focusing on "economy" (whether judicial or otherwise) and by emphasizing that "the requirement of finality is to be given a 'practical rather than a technical construction',"[99] Judge Rich avoids the internal inconsistencies which have plagued the opinions of his colleagues. Those opinions have required both that the decision complained of "raise issues separate and distinct from those raised by" the remaining, undecided portion of the case below and that a decision of the interlocutory appeal be "fundamental to further conduct of the appeal."[100] Unfortunately, if the interlocutory decision on appeal raises "issues separate and distinct from" the remaining, undecided portion of the case below, then a decision of the interlocutory appeal is hardly likely to be "fundamental to further conduct of the case" below. Moreover, while Judge Rich's colleagues are prone to talk about "the inconvenience and costs of piecemeal review,"[101] the inconvenience they seem to be most worried about is inconvenience to the court. Obtaining an early final determination of the correctness of the type of interlocutory decisions involved in these cases would often be enormously "convenient" for the parties and even for the lower tribunal.[102]

C. Panduit Corp. v. All States Plastic Mfg. Co.,____ F.2d ____ , 223 USPQ 465 (Fed. Cir. 1984) (per curiam, panel consisting of Circuit Judges Kashiwa, Miller, and Nies)

Without extended discussion, but with reliance on a CCPA precedent[103] and precedent from the D.C. and Seventh Circuits,[104] the court held that an order disqualifying counsel in a civil proceeding [105] is immediately appealable. Unfortunately, the court did not specify the basis on which the order was appealable, although it did state that "the grant of . . . a motion [to disqualify counsel] is appealable only if deemed final under certain exceptions [to 28 USC 1295 (a)(1)] such as the 'collateral order' doctrine established by Cohen v. Beneficial Industrial Loan Corp., 337 U.S. 541 (1941)."[106]

6. Conclusion

Unfortunately, the CAFC's reported opinions with respect to review of interlocutory decisions by the district courts and the administrative tribunals within the Patent and Trademark Office indicate that the CAFC still suffers from much the same internal division that plagued the CCPA. Of course, the recent passage of legislation giving the CAFC §1292(b)-type discretionary authority to review interlocutory decisions of the district courts should solve much of the problem in infringement litigation. On the administrative side, however, the practitioner faced with an interlocutory review problem is still condemned to reliance on the All Writs Act, the collateral order doctrine, and the Gillespie rule. While such reliance has often proved misplaced in the past, Judge Friedman's opinion in Mississippi Chemical, Chief Judge Markey's opinion in In re Mark Industries, and Judge Rich's opinion in Tenneco Resins offer considerable hope for the future.

First published in the Journal of the Patent and Trademark Office Society, 1985, pages 417-46.


*.OBLON, FISHER, SPIVAK, McCLELLAND & MAIER, P.C., Arlington, Virginia.

Copyright 1984, 1985 Charles L. Gholz. Portions of this paper appeared previously in Federal Circuit Patent Law, (Patent Resources Group, Inc., 1984) and in Federal Circuit Patent Law, (Patent Resources Group, Inc., 1985). This paper was delivered on April 1, 1985 at a conference sponsored by the Practicing Law Institute and entitled "Practicing Before the Court of Appeals for the Federal Circuit".


Endnotes


[1].28 USC 1292(c) reads as follows:

The United States Court of Appeals for the Federal Circuit shall have exclusive jurisdiction ‹ (1) of an appeal from an interlocutory order or decree described in subsection (a) of this section in any case over which the court would have jurisdiction of an appeal under section 1295 of this title; and (2) of an appeal from a judgment in a civil action for patent infringement which would otherwise be appealable to the United States Court of Appeals for the Federal Circuit and is final except for an accounting.


[2].28 USC 1292(a) reads as follow:

(a) Except as provided in subsections (c) and (d) of this section the courts of appeals shall have jurisdiction of appeals from:
(1) Interlocutory orders of the district courts of the United States, the United States District Court for the District of the Canal Zone, the District Court of Guam, and the District Court of the Virgin Islands, or of the judges thereof, granting, continuing, modifying, refusing or dissolving injunctions, or refusing to dissolve or modify injunctions, except where a direct review may be had in the Supreme Court;
(2) Interlocutory orders appointing receivers, or refusing orders to wind up receiverships or to take steps to accomplish the purposes thereof, such as directing sales or other disposals of property:
(3) Interlocutory decrees of such district courts or the judges thereof determining the rights and liabilities of the parties to admiralty cases in which appeals from final decrees are allowed.


[3].It has, however, issued one extremely interesting opinion concerning the merits of requests for preliminary injunctions in patent infringement cases. Smith International, Inc. v. Hughes Tool Co., 718 F.2d 1573, 219 USPQ 686 (Fed. Cir. 1983), cert. den.,____ U.S. ____ , 104 S.Ct. 493, 220 USPQ 385 (1983), discussed in Lewris, "Relief Available to the Prevailing Party in Patent Infringement Litigation," Federal Circuit Patent Law (Patent Resources Group, Inc. 1984) at pages 108-117.

[4].28 USC 1292(d) originally read as follows:

(d)(1) When the chief judge of the Court of International Trade issues an order under the provisions of section 256(b) of this title, or when any judge of the Court of International Trade, in issuing any other interlocutory order, includes in the order a statement that a controlling question of law is involved with respect to which there is a substantial ground for difference of opinion and that an immediate appeal from that order may materially advance the ultimate termination of the litigation, the United States Court of Appeals for the Federal Circuit may, in its discretion, permit an appeal to be taken from such order, if application is made to that Court within ten days after the entry of such order.
(2) When any judge of the United States Claims Court, in issuing an interlocutory order, includes in the order a statement that a controlling question of law is involved with respect to which there is a substantial ground for difference of opinion and that an immediate appeal from that order may materially advance the ultimate termination of the litigation, the United States Court of Appeals for the Federal Circuit may, in its discretion, permit an appeal to be taken from such order, if application is made to that Court within ten days after the entry of such order.
(3) Neither the application for nor the granting of an appeal under this subsection shall stay proceedings in the Court of International Trade or in the Claims Court, as the case may be, unless a stay is ordered by a judge of the Court of International Trade or of the Claims Court or by the United States Court of Appeals for the Federal Circuit or a judge of that court.


[5].28 USC 1291 specified in relevant part that "The jurisdiction of the United States Court of Appeals for the Federal Circuit shall be limited to the jurisdiction described in sections 1292(c) and (d) and 1295 of this title [i.e., of 28 USC]," and those sections simply did not provide for §1292(b)-type interlocutory reviews of such decisions.

[6].709 F.2d 710, ____USPQ_____(Fed. Cir. 1983) (in banc). There is apparently not going to be a USPQ cite for this important opinion. See also the more extended, but in dictum, discussion of this issue in Veach v. Vinyl Improvement Products Co., 700 F.2nd 1390, 217 USPQ 97 (Fed Cir. 1983) (per curiam), which foreshadowed the result in Harrington.

[7].609 F.2d 1002, 204 USPQ 195 (CCPA 1979).

[8].H. R. 6163. See 28 BNA PTCJ 677, 689 (Oct. 11, 1984).

[9].P.L. 98-620. See 29 BNA PTCJ 37 (Nov. 15. 1984).

[10].P.L. 98-620 effected these important changes by the simple expedient of inserting — which would have jurisdiction of an appeal of such action — after "The Court of Appeals" in 28 USC 1292(b) and inserting — or (b) — after "(a)" in 28 USC 1292(c)(1). As amended, and with the matter inserted by amendment italicized, 28 USC 1292(b) and (c) now read as follows:

(b) When a district judge, in making in a civil action an order not otherwise appealable under this section, shall be of the opinion that such order involves a controlling question of law as to which there is substantial ground for difference of opinion and that an immediate appeal from the order may materially advance the ultimate termination of the litigation, he shall so state in writing in such order. The Court of Appeals which would have jurisdiction of an appeal of such action may thereupon, in its discretion, permit an appeal to be taken from such order, if application is made to it within ten days after the entry of the order: Provided, however, That application for an appeal hereunder shall not stay proceedings in the district court unless the district judge or the Court of Appeals or a judge thereof shall so order.
(c) The United States Court of Appeals for the Federal Circuit shall have exclusive jurisdiction—
(1) of an appeal from an interlocutory order or decree described in subsection (a) or (b) of this section in any case over which the court would have jurisdiction of appeal under section 1295 of this title; and
(2) of an appeal from a judgment in a civil action for patent infringement which would otherwise be appealable to the United States Court of Appeals for the Federal Circuit and is final except for an accounting.


[11].See 1983 Summary of Proceedings of the Section of Patent, Trademark and Copyright Law at pages 70-73.

[12].The final report of that ad hoc committee is dated December 28. 1979.

[13].609 F.2d 1002, 204 USPQ 195 (CCPA 1979).

[14].Concerning this authority, see generally Gholz, Extraordinary Writ Jurisdiction of the CCPA in Patent and Trademark Cases, 58 JPOS 356 (1976).

[15].9 Moore's Federal Practice at 287 and 312. See also Gholz, op. cit. supra n. 14 at pages 366-72.

[16].Although the opinion is reported as a per curiam opinion, the slip opinion indicates that it was authored by Judge Bennett.

[17].See footnote 36, infra.

[18].Makari's attempted to rely on 35 USC 26, which provides that:

Any document to be filed in the Patent and Trademark Office and which is required by any law, rule, or other regulation to be executed in a specified manner may be provisionally accepted by the Commissioner despite a defective execution, provided a properly executed document is submitted within such time as may be prescribed.


However, this attempt was rejected on the grounds (1) that the original application was filed before the passage of 35 USC 26 and (2) that 35 USC 26 is not retroactive..

[19].218 USPQ at 194.

[20].See generally Gholz, "Petition and Appeal" Section II.C.6 at 18-12 in Patent Preparation and Prosecution Practice (2nd ed. 1983).

[21].See also Ashlow, Ltd. v. International Trade Commission, 673 F.2d. 1265, 213 USPQ 351 (CCPA 1982), and SSIH Equipment S.A. v. International Trade Commission, 673 F.2d. 1387, 213 USPQ 529 (CCPA 1982), each of which held that the ITC's action complained of was an appealable decision and that, in the words of the Ashlow opinion, "the petition for writ of mandamus, therefore, does not lie," 213 USPQ at 352; footnote omitted. Comparable language is found in the SSIH opinion at 213 USPQ 530.

[22].This issue is treated subsequently in this paper.

[23].218 USPQ at 578.

[24].35 USC 251 provides in relevant part that "the Commissioner shall . . . reissue the patent . . . for the unexpired part of the term of the original patent." When a patent has expired, there is no remaining "unexpired part of the term of the original patent."

[25].218 USPQ at 578.

[26].218 USPQ at 579.

[27].Id.

[28].Id.

[29].The petitioner was represented by the author's firm.

[30].219 USPQ at 582.

[31].219 USPQ at 582, quoting from Roche v. Evaporated Milk Association, 319 U.S. 21, 26 (1943).

[32].219 USPQ at 582, quoting from Bankers Life & Casualty Co. v. Holland, 346 U.S. 379, 382 (1953).

[33].219 USPQ at 582.

[34].219 USPQ at 582.

[35].See, e.g., Morris v. Diamond, 634 F.2d 1347, 208 USPQ 202, 205 (CCPA 1980), and In re Makari, supra.

[36].219 USPQ at 582. See also C.P.C. Partnership v. Nosco Plastics, Inc., 719 F.2d 400, 401, and In re International Medical Prosthetics Research Assn. Inc., 739, F.2d 618, 619, ____ USPQ_____, _____ (Fed. Cir. 1984), discussed infra, and Peterson Mfg. Co. v. Central Purchasing, Inc, 740 F.2d 1541, 1552, 222 USPQ 562, 570 (Fed Cir. 1984).

[37].See Gholz, op. cit supra note 14 at pages 366-372.

[38].719 F.2d. at 401.

[39].In re Mark Industries, ______F.2d ______, ______, _____ USPQ ______, ______, (Fed. Cir. 1984) (Markey, Ch. J.).

[40].The distinction implicit in this sentence is curious, since the regional circuit courts derive their "general supervisory authority" to issue writs of mandamus from the All Writs Act. See generally, Gholz, op. cit. supra n. 14 at pages 366-72.

[41].719 F.2d at 401. As evidenced by Mississippi Chemical, that question had actually had "its day" three days earlier, but the C.P.C. panel was apparently unaware of the action taken previously by the Mississippi Chemical panel.

[42].Private communication from Professor Irving Kayton.

[43].Although the CAFC's opinion refers to the writ as one "to compel removal of the action to the U.S. District Court for the Southern District of Alabama pursuant to 28 U.S.C. §1441(a), (b)," 220 USPQ at 9, the writ sought was apparently actually one to compel the district court to vacate its order remanding the case to the state court. That is, the writ was apparently directed to the Federal court, which had remanded the case, rather than to the state court, which of course had no authority to transfer the case to the Federal court, or to the parties, neither of which could again remove the action in the face of the lower Federal court's order remanding the case to the state court.

[44].220 USPQ at 9.

[45].657 F.2d at 109.

[46].220 USPQ at 9.

[47].The classic CCPA opinion concerning this basis for the issuance of an extraordinary writ is Margolis v. Banner, 599 F.2d 435, 202 USPQ 365 (CCPA 1979).

[48].See Harrington Mfg. Co. v. Powell Mfg. Co., 709 F.2d 710 (Fed. Cir. 1983) (in banc), which held that, at the time in question, the CAFC had no 28 USC 1292(b) jurisdiction over the district courts.

[49].The opinion stated that, because the CAFC "currently has no jurisdiction under 28 U.S.C. §1292(b) to review interlocutory matters, . . . petitioners are reduced to proceeding under 28 U.S.C. §1651, the All Writs Act," 221 USPQ at 1034.

[50].221 USPQ at 1034-35.

[51].739 F.2d at 619.

[52].739 F.2d at 619.

[53].739 F.2d at 620.

[54].739 F.2d at 619-20.

[55].739 F.2d at 620.

[56].739 F.2d at 621.

[57].740 F.2d at 1541, 222 USPQ at 570.

[58].28 USC 1447(d) states that, with an exception clearly not applicable here, "An order remanding a case to the State court from which it was removed is not reviewable on appeal or otherwise. . . ."

[59].223 USPQ at 1070.

[60].This aspect of the court's opinion is discussed in the section entitled "Sanctions on Appeal" of the chapter entitled "CAFC Procedure" in Federal Circuit Patent Law (Patent Resources Group, Inc., 1985).

[61].223 USPQ at 1072.

[62].______ USPQ at _____, citing, inter alia, Mississippi Chemical Corp. v. Swift Agricultural Chemicals Corp., supra.

[63]._____ USPQ at _____.

[64].See footnote 36, supra, and related text.

[65].15 USC 1071(a)(1) reads as follows:

(a) Persons entitled to appeal: United States Court of Appeals for the Federal Circuit; waiver of civil action, election of civil action by adverse party: procedure
(1) An applicant for registration of a mark, party to an interference proceeding, party to an opposition proceeding, party to an application to register as a lawful concurrent user, party to a cancellation proceeding, a registrant who has filed an affidavit as provided in section 1058 of this title, or an applicant for renewal, who is dissatisfied with the decision of the Commissioner or Trademark Trial and Appeal Board, may appeal to the United States Court of Appeals for the Federal Circuit thereby waiving his right to proceed under subsection (b) of this section: Provided, that such appeal shall be dismissed if any adverse party to the proceeding, other than the Commissioner, shall, within twenty days after the appellant has filed notice of appeal according to subsection (a)(2) of this section, files notice with the Commissioner that he elects to have all further proceedings conducted as provided in subsection (b) of this section. Thereupon the appellant shall have thirty days thereafter within which to file a civil action under said subsection (b) of this section, in default of which the decision appealed from shall govern the further proceedings in the case.


[66].35 USC 141 reads as follows:

An applicant dissatisfied with the decision of the Board of Patent Appeals and Interferences may appeal to the United States Court of Appeals for the Federal Circuit, thereby waiving his right to proceed under section 145 of this title. A party to an interference dissatisfied with the decision of the Board of Patent Appeals and Interferences may appeal to the United States Court of Appeals for the Federal Circuit, but such appeal shall be dismissed if any adverse party to such interference, within twenty days after the appellant has filed notice of appeal according to section 142 of this title, files notice with the Commissioner that he elects to have all further proceedings conducted as provided in section 146 of this title. Thereupon the appellant shall have thirty days thereafter within which to file a civil action under section 146, in default of which the decision appealed from shall govern the further proceedings in the case.


[67].215 F.2d 285, 103 USPQ 54 (CCPA 1954).

[68].See, e.g., Seamless Rubber Co. v. Ethicon, 268 F.2d 231, 122 USPQ 391 (CCPA 1959).

[69].467 F.2d 501, 175 USPQ 417 (CCPA 1972).

[70].736 F.2d 1508, 222 USPQ 276 (Fed. Cir. 1984).

[71].See generally Dunner, Court Review of Patent Office Decisions: CCPA §5.07, beginning at page 5-46.1.

[72].699 F.2d 1390, 217 USPQ 98 (Fed. Cir. 1983) (per curiam).

[73].The panel consisted of Circuit Judges Bennet, Smith, and Nies.

[74].See also Parker Bros, v. Tuxedo Monopoly, Inc.,____ F.2d ____, ____ USPQ ____ (Fed. Cir. 1985) (Per curiam, opinion by Chief Judge Markey), in which another panel of the court sua sponte dismissed an appeal from the denial of a motion for summary judgment, citing Wagner Shokai.

[75].Particularly Seamless Rubber Co. v. Ethicon, 268 F.2d 231, 122 USPQ 391 (CCPA 1959), cited by the court in Wagner.

[76].337 U.S. 541 (1949). The Baker Perkins opinion also discusses a mandamus issue, dealt with supra in Section 3.

[77].218 USPQ at 579.

[78].218 USPQ at 578.

[79].35 USC 251 provides in relevant part that "the Commissioner shall . . . reissue the patent . . . for the unexpired part of the term of the original patent." When a patent has expired, there is no remaining "unexpired part of the term of the original patent."

[80].218 USPQ at 578.

[81].218 USPQ at 579.

[82].The $50 figure assumes that Baker Perkins is not a small entity and that the petition would be based on the assertion that the abandonment of the reissue application was "unavoidable" (since 35 USC 251 "unavoidably" caused the reissue application to go abandoned) rather than that the failure to continue prosecution was "unintentional."

[83].Notably, Wagner Shakai, Inc. v. Kabushiki Kaisha Wako, discussed supra at footnote 61 and accompanying text.

[84]. FRAP 27(c) reads as follows:

(c) Power of a Single Judge to Entertain Motions. In addition to the authority expressly conferred by these rules or by law, a single judge of a court of appeals may entertain and may grant or deny any request for relief which under these rules may properly be sought by motion, except that a single judge may not dismiss or otherwise determine an appeal or other proceeding, and except that a court of appeals may provide by order or rule that any motion or class of motions must be acted upon by the court. The action of a single judge may be reviewed by the court.


[85]. See, e.g., Knickerbocker Toy Co. v. Faultless Starch Co., 467 F.2d 501, 175 USPQ 417 (CCPA 1972), and Chesebrough-Pond's Inc. v. Faberge, Inc., 618 F.2d 776, 205 USPQ 888 (CCPA 1980).

[86].R.G. Barry Corp. v. Mushroom Makers, Inc., 609 F.2d 1002, 204 USPQ 195 (CCPA 1979) (Baldwin, J.); Champion Products, Inc. v. Ohio State University, 614 F.2d. 763, 204 USPQ 833 (CCPA 1980) (Markey, Ch. J); and Baker Perkins, Inc. v. Werner & Pfleiderer Corp., 710 F.2d. 1561, 218 USPQ 577 (Fed. Cir. 1983) (Baldwin, C.J.).

[87].The Court of Claims had no pertinent precedent because of the internal division of that court into a Trial Division and an Appellate Division the relationship between which was much less structured than the relationship between a circuit court and its district courts or between the CCPA and the administrative boards in the PTO.

[88].USC 1295(a)(1) reads as follows:

(a) The United States Court of Appeals for the Federal Circuit shall have exclusive jurisdiction—
(1) of an appeal from a final decision of a district court of the United States, the United States District Court for the District of the Canal Zone, the District Court of Guam, the District Court of the Virgin Islands, or the District Court for the Northern Mariana Islands, if the jurisdiction of that court was based, in whole or in part, on section 1338 of this title, except that a case involving a claim arising under any Act of Congress relating to copyrights or trademarks and no other claims under section 1338(a) shall be governed by Sections 1291, 1292, and 1294 of this title.


[89].222 USPQ at 277.

[90].222 USPQ at 277, quoting from Flanagan v. United States, ____ U.S. ____, 104 S. Ct. 1051 (1984), which in turn quotes from Coopers & Lybrand v. Livesay, 437 U.S. 463, 468 (1978).

[91].222 USPQ at 278, emphasis omitted Reeves argued that this fourth condition was deducible from the Supreme Court's opinion in Nixon v, Fitzgerald, 457 U.S. 731, 742 (1982).

[92].He deduced this from the fact that it was not mentioned in either Flanagan or Coopers & Lybrand, although Nixon was decided subsequent to Coopers & Lybrand and might have been thought to add an additional requirement to those stated in Coopers & Lybrand and despite the fact that Nixon listed the fourth requirement as an "additional requirement."

[93].The name is derived from Gillespie v. United States Steel Corp., 397 U.S. 148 (1964).

[94].227 USPQ at 278, quoting from Gillespie, 397 U.S. at 154.

[95].222 USPQ at 278.

[96].Id.

[97].222 USPQ at 279. Although it does not detract from the authority of Judge Rich's opinion on the interlocutory appeal issue, it is worth noting that Tenneco lost on the merits when its interlocutory appeal was heard. Tenneco Resins, Inc. v.Reeves Bros., Inc.,____F.2d ____, ____USPQ____ (Fed. Cir. 1985).

[98]. See also Judge Friedman's opinion in Mississippi Chemical, in which Judge Rich joined.

[99].222 USPQ at 278, quoting from Gillespie.

[100].See, e.g., Chief Judge Markey's opinion in Champion Products, 204 USPQ at 834.

[101].Champion Products, 204 USPQ at 834.

[102].This point was made emphatically, but apparently unpersuasively, by the Trademark Trial and Appeal Board in R.G. Barry Corp. v. Mushroom Makers, Inc., 609 F.2d 1002, 204 USPQ 195 (CCPA 1979).

[103].Ah Ju Steel Co. v. Armco, Inc., 680 F.2d 751, 753 (CCPA 1982).

[104].Koller v. Richardson-Merrill, Inc., 737 F.2d 1038 (D.C. Cir. 1984), and Freeman v. Chicago Musical Instrument Co., 689 F.2d 715 (7th Cir. 1982).

[105].The limitation to a civil proceeding was required to distinguish Flanagan v. United States, _____ U.S. ____, 104 S. Ct. 1051 (1984), which held that an order disqualifying counsel in a criminal proceeding is not immediately appealable.

[106].223 USPQ at 469. This opinion is also of interest for its citation of Tenneco Resins, supra, without any indication that it was an opinion by a single judge rather than an opinion of the court.