CAFC Reviews Of Interlocutory Decisions

1985 – Article
Journal 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" jurisdi