Patent Underlying Walker Process Claim Is Not Enough to Give Rise to Federal Circuit Jurisdiction

In Chandler v. Phoenix Services LLC, No. 2020-1848 (Fed. Cir. June 10, 2021), the Federal Circuit transferred the case to the United States Court of Appeals for the Fifth Circuit finding that it lacked jurisdiction.

Chandler brought a Walker Process claim based on Phoenix’s assertion of U.S. Patent No. 8,171,993, which was held unenforceable due to inequitable conduct.  On appeal, the Federal Circuit held that it lacked jurisdiction over the appeal because the action did not “arise under” an “Act of Congress relating to patents” as required by 28 U.S.C. § 1295(a)(1).  The Court explained that a case “relates” to patent law if (1) federal patent law gives rise to the cause of action or (2) the plaintiff’s right to relief did not necessarily depend on a substantial question of federal patent law.  Here, Chandler’s claim arose under the Sherman Act and resolution of the issue did not depend on resolution of a substantial question of patent law.  While not determinative of the issue, the Court found it significant that the patent at issue had already been ruled unenforceable.