from the United States District Court for the Western
District of Texas in No. 1:14-cv-01113-SS, Judge Sam Sparks.
Michael S. Truesdale, Law Office of Michael S. Truesdale,
PLLC, Austin, TX, argued for plaintiff-appellant.
Gabriel Fountain, DLA Piper U.S. LLP, Austin, TX, argued for
defendant-appellee. Also represented by Brian K. Erickson,
Moore, Mayer, and Hughes, Circuit Judges.
only asserted claim in the underlying case is a Walker
Process monopolization claim based on alleged fraud on
the United States Patent and Trademark Office
("PTO"). Both parties assert that the Federal
Circuit has appellate jurisdiction over this case. We
disagree. We therefore transfer the case to the United States
Court of Appeals for the Fifth Circuit, which has appellate
jurisdiction over cases from the District Court for the
Western District of Texas.
appeal arises from a single cause of action filed in the
United States District Court for the Western District of
Texas: a Walker Process monopolization claim under
§ 2 of the Sherman Act and §§ 4 and 6 of the
Clayton Act based on the alleged fraudulent prosecution of a
patent. J.A. 29, 63. Xitronix stated the Federal
Circuit had jurisdiction over this appeal pursuant to 28
U.S.C. § 1295(a)(1) and Nobelpharma AB v. Implant
Innovations, Inc., 141 F.3d 1059, 1067-68 (Fed. Cir.
1998), and KLA-Tencor ("KLA") did not dispute this
oral argument, we asked the parties to show cause why we
should not transfer this case to the United States Court of
Appeals for the Fifth Circuit for lack of jurisdiction. The
parties filed supplemental briefs, asserting that the Federal
Circuit has appellate jurisdiction over this case. The briefs
did not address the impact of the Supreme Court's
decision in Gunn v. Minton, 568 U.S. 251 (2013). At
oral argument, we ordered another round of supplemental
briefing to address jurisdiction and, in particular, Gunn
court has jurisdiction over the appeal of a final decision of
a district court "in any civil action arising under . .
. any Act of Congress relating to patents or plant variety
protection." 28 U.S.C. § 1295(a)(1). Interpreting
nearly identical language in a previous version of our
jurisdictional statute, the Supreme Court stated our
jurisdiction extends "only to those cases in which a
well-pleaded complaint establishes either that federal patent
law creates the cause of action or that the plaintiff's
right to relief necessarily depends on resolution of a
substantial question of federal patent law, in that
patent law is a necessary element of one of the
well-pleaded claims." Christianson v. Colt Indus.
Operating Corp., 486 U.S. 800, 809 (1988) (emphasis
added); see also Holmes Grp., Inc. v. Vornado Air
Circulation Sys., Inc., 535 U.S. 826, 834 (2002) (By
using "arising under" in our jurisdictional
statute, "Congress referred to a well-established body
of law that requires courts to consider whether a patent-law
claim appears on the face of the plaintiff's well-pleaded
complaint."), superseded in part by statute,
Leahy-Smith America Invents Act § 19(b), Pub. L. No.
112-29, 125 Stat. 284 (2011) (amending 28 U.S.C. §
1295(a)(1) to add compulsory patent counterclaims).
holding that our jurisdiction extends to cases in which
patent law is a necessary element of one of the well-pleaded
claims, the Supreme Court explained that the well-pleaded
complaint rule "focuses on claims, not theories, . . .
and just because an element that is essential to a particular
theory might be governed by federal patent law does not mean
that the entire monopolization claim 'arises under'
patent law." Christianson, 486 U.S. at 811. In
that case, the Court held that the Federal Circuit did not
have jurisdiction over the asserted monopolization claim
because it was based on several alleged theories, and only in
one of those theories was "the patent-law issue  even
arguably essential." Id.
recently, in Gunn, the Supreme Court held that a
state law claim alleging legal malpractice in the handling of
a patent case does not "aris[e] under" federal
patent law for purposes of exclusive federal jurisdiction
under 28 U.S.C. § 1338(a). 568 U.S. at 258. Like the
language of our jurisdictional statute, § 1338(a) states
that federal district courts "shall have original
jurisdiction of any civil action arising under any Act of
Congress relating to patents, plant variety protection,
copyrights and trademarks." 28 U.S.C. § 1338(a);
compare § 1338(a), with § 1295(a)
("[T]he Federal Circuit shall have exclusive
jurisdiction . . . of an appeal from a final decision of a
district court . . . in any civil action arising under . . .
any Act of Congress relating to patents or plant variety
protection."). The state malpractice claim necessarily
required application of patent law, creating a patent law
"case within a case, " and the patent issue was
actually disputed by the parties. Gunn, 568 U.S. at
259. However, the Supreme Court held that "the federal
issue in this case is not substantial" when analyzed
with respect to the federal system as a whole. Id.
at 260. The resolution of the patent "case within a
case" would have no effect on "the real-world
result of the prior federal patent litigation, " and
allowing the state court to resolve the underlying patent
issue would not undermine the uniform body of patent law
because "federal courts are of course not bound by state
court case-within-a-case patent rulings." Id.
at 261-62. Even if a novel question of patent law arose in
such a situation, it would still "at some point be
decided by a federal court in the context of an actual patent
case, with review in the Federal Circuit, " and even if
the state court's adjudication was "preclusive under
some circumstances, the result would be limited to the
parties and patents that had been before the state
court." Id. at 262- 63. The Supreme Court
explained, "the possibility that a state court will
incorrectly resolve a state claim is not, by itself, enough
to trigger the federal courts' exclusive patent
jurisdiction, even if the potential error finds its root in a
misunderstanding of patent law." Id. at 263.
complaint in this case alleges that KLA "engaged in
exclusionary conduct by fraudulently prosecuting to issuance
the [']260 patent" and its conduct "was and is
specifically intended to monopolize and destroy competition
in the market." J.A. 63. It alleges KLA intentionally
made false representations to the PTO on which the examiner
relied during prosecution. On the face of the complaint, no
allegation establishes "that federal patent law creates
the cause of action." Christianson, 486 U.S. at
809. The only question is whether the monopolization
allegation "necessarily depends on resolution of a
substantial question of federal patent law, in that patent
law is a necessary element of one of the ...